Decision No. EX-15-7 of 11 December 2015 of the President of the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) adopting the Guidelines for Examination in the Office on Community Trade Marks and on Registered Community Designs, Европейский союз (ЕС)

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 decides on applications 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 quality 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 to 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 taking into account operational needs and the 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 before 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 comments submitted in advance from users are taken into consideration. The three steps of the process – analysis, drafting and discussion – must be completed in a timely 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 translations 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 published on the 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 revision 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

Chapter 2, Comparison of Goods and Services

Chapter 3, Relevant public and degree of attention

Chapter 4, Comparison of signs

Chapter 5, Distinctiveness of the earlier mark

Chapter 6, Other factors

Chapter 7, 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 that must accompany the payment .................................................... 5

2.2 Payment by debit or credit card ................................................................ 7 2.3 Payment by the Office 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 Fee Reduction for the CTM Application Filed by Electronic Means.... 14

7 Decisions on Costs ................................................................................. 15 7.1 Apportionment of costs ........................................................................... 15 7.2 Fixing of costs .......................................................................................... 15 7.3. Enforcement of the decision on costs ...................................................... 15

7.3.1 Conditions..................................................................................................... 15 7.3.2 National authority.......................................................................................... 16 7.3.3 Proceedings.................................................................................................. 16

Payment of Fees, Costs and Charges

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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 the Office (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 Office website.

Similarly, for RCDs, in addition to the provisions contained in the basic CDR and in the CDIR, there is a specific regulation on the fees payable to the Office (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 that 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 users for the filing and handling of trade marks and designs proceedings; the fees regulations determine the amounts of the fees and the 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 recital 18 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 representatives 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 online 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 0524/2008-1, TEAMSTAR).

The Office cannot issue invoices. However, the Office will provide a receipt 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 CAIXESBBXX

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 transfer ‘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 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.

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2.1.2 Details that 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 (judgments of 31/05/2005, T-373/03, Parmitalia, EU:T:2005:191, § 58; 09/09/2010, T-70/08, Etrax, EU:T:2010:375, § 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. The Office receives thousands of payments a day and the 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:

 number of the proceeding (e.g. CTM, opposition number, RCD number etc.);

 payer’s 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 limited number of characters may be used 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.

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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

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 RENEWAL 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 RENEWAL

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’s name Payer’s address Payer’s city and postcode

John Smith 58 Long Drive London, ED5 6V8

 Use a name that can be identified as a payer, applicant (owner or representative) or opponent.

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 For the payer’s name, use only the name without abbreviations, like DIPL.-ING. PHYS., DR., etc.

 Use the same form of identification for future payments.

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 of the Office’s fees. Only certain online services can be paid by debit or credit card.

For applications and renewals filed electronically, payment by debit or credit card is the recommended method. Debit or credit card payments allow the Office 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 therefore not 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 the Office 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 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 the Office 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 Office, as for any request that 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 for which the payment was made (for instance a notice of opposition) is submitted 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’, § 13-14). The date on

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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.

If the person (either party to the proceedings or their representative) that 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 correctly identified, the Office recommends clearly indicating the Office ID number of the holder of the current account with the Office.

The system of current accounts is an automatic 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 charges 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 automatically debited with reference to the corresponding procedural act for which the payment is due.

If there are insufficient funds in a current account, the holder will be notified by the Office and given 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.

The Office provides current account holders with access to their current account information over a secure internet connection for at least the previous year via its website. The service includes the account balance, a 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 effective on the 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 whether 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

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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 Office by sending a request to the general fax No +34 965 131 344, or email: fee.information@oami.europa.eu.

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, then 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) and (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 the 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 submitted 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)

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paid a surcharge of 10 % 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, EU:T:2011:211, § 38, and decision of 10/10/2006, R 0203/2005-1, Blue Cross).

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 on the surcharge’ (decision of 07/09/2012, R 1774/2011-1, LAGUIOLE, § 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, the Guidelines, Part B, Examination, Section 2, Formalities, deals with the consequences of late payment of the application fee while the Guidelines, Part C, Opposition, 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 printout of an electronic 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.

This additional evidence is only considered sufficient if supported by the initial evidence.

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This list is not exhaustive.

If the evidence is not clear, the Office will send a request for further evidence.

If no evidence is submitted, the procedure for which the payment was made is deemed not to have been entered.

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

Decision No EX-13-2 of the President of the Office of 26/11/2013 as amended in 2015

Payment by credit or debit card is deemed to have been made on the date on which the relevant electronic filing or request was successfully completed. If, when the Office attempts to debit the credit or debit card, the transaction fails for some reason, payment is considered not to have been made. This applies even when the payer was not responsible for the failure of the transaction.

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 renewal, the account holder may choose ‘Debit now’ or ‘Debit on expiry’. If a party withdraws its action

Payment of Fees, Costs and Charges

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(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.

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 provided for in the regulations. Refunds are given by means of bank transfers or through current accounts with the Office, even when the fees were paid by debit or credit card.

5.1 Refund of application fee

Rule 9(1) and Rule (2) CTMIR Articles 10, 13 and 22 CDIR Article 43(1) 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 or at the latest on the same day as the amount actually entered 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 that 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 dealt with as a Community design

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and any fees paid will be refunded. On the contrary, under no circumstances will the fees be refunded if the design applied for has been registered.

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 Guidelines, 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 Rule (7) CTMIR

Fees that 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 fee will 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;

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 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.

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 excess sum is paid to cover a fee or a charge, 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 Fee Reduction for the CTM Application Filed by Electronic Means

Article 2 (1b) CTMFR Decision No EX-13-2 of the President of the Office of 26/11/2013 as amended in 2015

According to Article 2(1b) CTMFR, the basic fee for an application for an individual mark may benefit from a reduction if the application has been filed by electronic means. The applicable rules and procedure for such an electronic filing may be found in Decision No EX-13-2 of the President of the Office of 26/11/2013 read in conjunction with the Terms and Conditions related to this Decision.

In order to be considered an application for a CTM filed by electronic means in the sense of Article 2(1b) CTMFR, the applicant has to insert all the goods and/or services to be covered by the application directly into the Office tool. Consequently, the applicant must not include the goods and/or services in an annexed document or submit them by any other means of communication. If the goods and/or services are annexed in a document or submitted to the Office by any other means of communication, the application will not be considered as having been filed by electronic means and may not benefit from the corresponding fee reduction.

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7 Decisions on Costs

Article 85 CTMR Rule 94 CTMIR

7.1 Apportionment of costs

In inter partes proceedings, the Opposition Division, the Cancellation Division and the Boards of Appeal must take a decision on the apportionment of costs. Those costs include in particular the costs of the professional representatives, if any, and the corresponding fees. For further information relating to the apportionment of costs in opposition proceedings, see the Guidelines, Part C, Opposition, Section 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 the Guidelines, Part A, General Rules, Section 6, Revocation of Decisions, Cancellation of Entries in the Register and Correction of Errors).

7.2 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.

7.3. 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.

7.3.1 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.

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7.3.2 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); Netherlands (OJ OHIM 12/1999, p. 1517); Slovakia (OJ OHIM 11/2004, p. 1273); 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 the Office or the CJEU.

7.3.3 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.

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 7.1 and 7.2 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).

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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 legal 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 that 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 or an RCD. 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 behalf of natural or legal persons must file a signed authorisation for insertion in the files.

Where a representative has been appointed, the Office will communicate solely with that representative.

For further information on specific aspects of professional representation during proceedings before the Office in relation to international marks, please consult the Guidelines, Part M, International Marks.

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 representative 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 to comply with further conditions and need to be included on a specific list maintained by the Office for this purpose (the Office’s list of professional representatives). Amongst these, two further groups need to be distinguished: 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 is made up of employees acting as representatives for the party to proceedings before the Office (Article 92(3) CTMR, first alternative) (see paragraph 2.4.1) or employees of economically linked legal persons (Article 92(3) CTMR, second alternative) (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 fulfil 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 Office’s list of professional representatives 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 identified under a single ID; see the Guidelines, Part E, Register Operations, Section 1, Changes in a Registration). Individual representatives may have one ID as an employee 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 ‘Office professional representative’, since they do not need to be admitted by the Office. The Office, therefore, almost invariably refuses requests from legal practitioners to be entered on the list of Office professional representatives. The only exception is where a professional representative on the list is also a legal 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 and/or design matters.

2.2.1 The term ‘legal practitioner’

Directive 98/5/EC 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 practise 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 requirement 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 in the European Union (for the definition of what constitutes the European Union, see paragraph 3.1.2 below). A PO 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 place of business within the European Union, and the 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 fulfil 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 Office. Legal practitioners are not entered on the list of professional representatives to which Article 93(2) CTMR refers, because the entitlement and the special professional qualifications referred to in those provisions relate to persons belonging to categories of professional representatives specialising 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 the list is also a legal 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 Office’s list of professional representatives and the designs list.

For this category of professional representatives, the entry on the Office’s list of professional representatives or designs list entitles them to represent third parties before the Office. A representative who is entered on the Office’s list of professional representatives, referred to in Article 93(1)(b) CTMR, is automatically entitled to represent third parties in design matters according to Article 78(1)(b) CDR and will not be entered on the 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 Office’s list of professional representatives 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 special professional qualification (Article 93(2)(c) CTMR, first alternative). 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 such requirement for a special 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) CTMR, second alternative). A subcategory of this category of Member States are those Member States that have a system officially recognising a professional qualification to represent third parties before the national office concerned although such recognition is not a prerequisite for the exercise of professional representation. In this case, persons 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 entered on the 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.

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 Office

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professional representative where such a dual qualification is allowed under national law (e.g. this is not compatible in Belgium and France).

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.

2.3.2 Nationality and place of business

Article 93(2)(a) and (b) and Article 93(4) CTMR

A 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 updated lists of professional representatives entitled to represent clients before their office (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 submits 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) CTMR and Article 78 CDR

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 Office’s list of professional representatives 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 given the opportunity to reply to the Office’s deficiency notification to that effect, a rejection decision will be issued unless the applicant remedies the said deficiency. The party concerned may file an appeal against this decision (Article 58(1) CTMR and Article 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 Office’s list of professional representatives 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 and Article 64(1) and (6) CDIR

The entry of a professional representative on the Office’s list of professional representatives 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 sent to the representative and the deletion will be published 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) and (5) CDIR

The entry of a professional representative in the Office’s list of professional representatives 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 exemption under Article 93(4)(b) CTMR;

c) where the professional representative no longer 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 Design Attorney to a trade mark attorney they will be removed from the designs list and introduced in the Office’s list of professional representatives.

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 notified to the representative and the deletion will be published in the Official Journal of the Office. The party concerned can lodge an appeal against this decision (Decision 2009-1 of the Presidium of the Boards of Appeal of 16 June 2009 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 and Article 64(3) CDIR

The entry of the professional representative on the Office’s list of professional representatives 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 to appeal, the Office will inform the representative and give them an opportunity to make comments (Decision 2009-1 of the Presidium of the Boards of Appeal of 16 June 2009 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 and Article 64(4) CDIR

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 submitted 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 and Article 77(3) CDR

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’).

A natural person whose domicile is outside the Community cannot designate an employee representative in the EU.

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, § 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) CTMIR, 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, Article 77(3) CDR

Where employees act for their employer, this is not a case of professional representation under Article 93(1) CTMR. As such, Rule 94(7)(d) CTMIR is not applicable for the apportionment and fixing of costs in inter partes proceedings (decision of 03/02/2011, R 0898/2010-1, MYBEAUTY, § 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, § 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 legal person with economic connections

Article 92(3) CTMR and Article 77(3) CDR

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 L 195, 29/07/1980, 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 L 31, 09/02/1996, 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.

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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:

- 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.

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 custodian, or a company 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 borne in mind, however, that a legal person addressing the Office from outside the European Union must be represented by a professional 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 the 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 that have neither domicile nor their principal place of business nor a real and 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.

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The same applies to international registrations designating the EU. For further information on this point, please consult the Guidelines, 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 proceedings indicates an address outside of the EU, but relies on a place 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 made to the address in the EU. The criteria of the principal place of business or real and effective 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 real and effective industrial or commercial establishment since it has its own legal personality (decision of 01/04/2014, R 1969/2013-4, DYNATRACE, § 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 in the EU. It is 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, § 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/holder, 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 and 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 invite the applicant to appoint a representative within a two-month time limit as part of the formality examination pursuant to Rule 9(3) CTMIR. Where the applicant fails to comply with this communication, the CTM application will be refused.

The same course of action will be taken where the appointment of a representative 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 specific (‘secondary’) request is introduced on behalf of the CTM applicant during the registration process, e.g. a request for inspection of files, a request for registration of a licence or a request for restitutio in integrum, the appointment of a representative need not be repeated, but the Office may in case of doubt request an authorisation. 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 Rule 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 representative within a two-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, Examination, Section 1, Proceedings).

When a representative resigns, the proceedings continue with the opponent itself if it is 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 real 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 that a new representative must be appointed within a two-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 change by sending a copy of the letter and of 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 taken into account, and the request will be dealt with on the basis of the evidence that 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 appointed, 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 appointed in a subsequent communication, whether signed by the party to the proceedings or by the representative (self-appointment). The appointment must be unequivocal.

If there is no representative in the proceedings, a communication made in respect of a particular procedure (e.g. registration or opposition), accompanied by an authorisation signed by the party to the proceedings, implies the appointment of a representative. This also applies where a General Authorisation is filed in the same way. For information about General Authorisations, see paragraph 5.2 below.

If there is already a representative in the proceedings, the represented person has to clarify if the former representative will be replaced.

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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 month. 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 indicated, and not 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 76 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 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 replaced by the ID number attributed by the Office, together with the representative’s name. Not only Office 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, § 21).

Rule 1(1)(e), Rules 67(2) and 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 different address as the address for service in accordance with Rule 1(1)(e) CTMIR;

- where the additional representative is appointed for a specific 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. that is 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 and Rule 67 CTMIR

Where a representative 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 and Rule 76 CTMIR

In principle, professional representatives do not need to file an authorisation to act before the Office. However, any professional representative (legal practitioner or Office 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 Guidelines, Part A, General Rules, 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 appointed 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 fax. 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 issued an authorisation number and will 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 action 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 signed 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 effect 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. The request must indicate the number of proceedings (e.g. CTM/RCD number, opposition etc.). 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

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proceedings following death or legal incapacity, see the Guidelines, Part C, Opposition, Section 1, Procedural Matters.

For insolvency proceedings, once a liquidator has been nominated, they will assume the capacity to act on behalf of the bankrupt person and may, 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 the Guidelines, Part E, Register Operations, Section 3, CTMs as Objects of Property, Chapter 5, Insolvency Proceedings or Similar Proceedings.

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 deemed 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, par. 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 Office 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 entered 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 Office 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 utility 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 entered on the list of Article 93 CTMR. Entry on the list is open to persons who have passed the trade marks, industrial designs and geographical indications part.

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 Office 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

As from 1 July 2014, the Finnish Patent Office will issue certificates to those professional representatives who comply with the conditions laid down in Article 93(2) CTMR to be entered in the list of professional representatives.

France Avocat Legal practitioners are entitled but a person cannot be a lawyer 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 Propriété industrielle.

Only persons on the ‘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 Office professional representatives 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 list 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 individual 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 Office PROF REP)

Entitlements/specific rules for representing clients in trade mark and design matters

Germany Rechtsanwalt Lawyers are fully entitled Patentanwalt A ‘Patentassessor’ is not qualified to act as a professional representative. He may act as an employee representative.

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 Office’s list of professional representatives.

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 Office’s list of professional representatives.

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 patent 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 Office PROF REP)

Entitlements/specific rules for representing clients in trade mark and design matters

Latvia Advokāts Lawyers can only 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.

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 represented by a professional representative. Notaries cannot act as representatives by right.

Lithuania Advokatas Lawyers can only 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 represented by a professional 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 Office 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 legal 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 Propriedade Industrial

Five 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 Office 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 Odvetnik 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. Patentombud 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 Office 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

Barrister, Solicitor, Registered Trade Mark Attorney

Lawyers are fully entitled. Registered Trade Mark Attorney 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 Mallioikeusasiamies/,

Mönsterrättsombud Ireland Registered Patent Agent Italy Consulente in brevetti Latvia Patentpilnvarotais

dizainparaugu lietas Luxembourg Conseil en Propriété

Industrielle Romania Consilier de proprietate

industriala 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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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 ....................................................................7

4 Filing Date .................................................................................................. 7 4.1 Filing date requirements ............................................................................7

4.1.1 Fee.................................................................................................................. 7 4.1.2 Request .......................................................................................................... 8 4.1.3 Applicant ......................................................................................................... 8 4.1.4 Representation of the mark ............................................................................ 8 4.1.5 List of goods and services .............................................................................. 8

4.2 Filing date receipt....................................................................................... 9 4.2.1 Applications filed electronically....................................................................... 9 4.2.2 Applications received directly by the Office.................................................... 9 4.2.3 Applications filed through national offices (intellectual property office of a

Member State or Benelux Office) ................................................................... 9

5 Goods and Services .................................................................................. 9 5.1 Classification.............................................................................................. 9 5.2 Specific formality deficiency for e-filing ................................................. 10

6 Signature .................................................................................................. 10

7 Languages/Translations ......................................................................... 11 7.1 First and second languages .................................................................... 11 7.2 The correspondence language................................................................ 11 7.3 Reference language for translations....................................................... 12 7.4 Translation of multilingual elements....................................................... 12 7.5 Restriction of goods and services .......................................................... 14

8 Owner, Representative and Address for Correspondence .................. 14 8.1 Applicant................................................................................................... 14 8.2 Representative.......................................................................................... 15 8.3 Change of name/address ......................................................................... 15 8.4 Transfer of ownership.............................................................................. 15

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9 Kind of Mark............................................................................................. 16 9.1 Individual marks ....................................................................................... 16 9.2 Collective marks....................................................................................... 16

9.2.1 Character of collective marks ....................................................................... 16 9.2.2 Applicants for collective marks ..................................................................... 16 9.2.3 Documents to be filed................................................................................... 17 9.2.4 Examination of formalities relating to collective marks................................. 17

9.2.4.1 Regulations governing use not submitted..................................................17 9.2.4.2 Regulations governing the use submitted but with deficiencies.................17

9.2.5 Changes of the kind of mark (from collective to individual) .......................... 17

10 Mark Type................................................................................................. 18 10.1 Word marks............................................................................................... 18 10.2 Figurative marks....................................................................................... 19 10.3 Three-dimensional marks ........................................................................ 21 10.4 Sound marks............................................................................................. 23

10.4.1 Electronic sound file ..................................................................................... 24 10.4.2 Musical notations .......................................................................................... 24 10.4.3 Sonographs .................................................................................................. 24

10.5 Colour per se ............................................................................................ 25 10.6 Holograms ................................................................................................ 27 10.7 Smell/Olfactory marks.............................................................................. 27 10.8 Other marks .............................................................................................. 27

10.8.1 Animated marks (movement) ....................................................................... 27 10.8.2 Position marks .............................................................................................. 28 10.8.3 Tracer marks................................................................................................. 30

10.9 Correction of the mark type..................................................................... 31 10.9.1 General rules ................................................................................................ 31 10.9.2 Examples of recurring mark type deficiencies.............................................. 31

10.9.2.1 Word marks ...............................................................................................31 10.9.2.2 Figurative marks........................................................................................31

11 Series Marks ............................................................................................ 33 11.1 Multiple figurative representations ......................................................... 33

12 Indication of Colour................................................................................. 34

13 Mark Descriptions ................................................................................... 36

14 Disclaimer ................................................................................................ 40

15 (Convention) Priority ............................................................................... 41 15.1 Principle of first filing............................................................................... 43 15.2 Triple identity............................................................................................ 44

15.2.1 Identity of the marks ..................................................................................... 44 15.2.2 Identity of the goods and services ................................................................ 44

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15.2.3 Identity of the owner ..................................................................................... 45

15.3 Priority requirements not satisfied ......................................................... 45 15.4 Priority documents not provided ............................................................ 45 15.5 Language of previous application........................................................... 46 15.6 Priority date check after changing of the filing date.............................. 46 15.7 Examples of priority claims ..................................................................... 46

15.7.1 First filing ...................................................................................................... 46 15.7.2 Comparison of the marks ............................................................................. 47 15.7.3 Comparison of the goods and services ........................................................ 51 15.7.4 Priority claims based on series marks.......................................................... 52 15.7.5 Claiming priority for three-dimensional or ‘other’ marks............................... 53 15.7.6 Priority claims involving collective marks ..................................................... 53

16 Exhibition Priority.................................................................................... 53

17 Seniority ................................................................................................... 54 17.1 Harmonised seniority information .......................................................... 54 17.2 Seniority examination .............................................................................. 55 17.3 Identity of the marks ................................................................................ 56 17.4 Goods and services ................................................................................. 56 17.5 Treatment of seniority examination deficiencies ................................... 57 17.6 Examples of seniority claims................................................................... 57

18 Transformation ........................................................................................ 58

19 Amendments to the CTM Application .................................................... 58 19.1 Amendments to the representation of the mark..................................... 58

20 Conversion............................................................................................... 60 Annex 1: ............................................................................................................. 61 Required format for seniorities ........................................................................ 61

Formalities

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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-13-2 of the President of the Office

The applicant may file the application for a CTM directly with the Office, with the central industrial property office of a Member State or with the Benelux Office.

CTM applications may be sent to the Office electronically (through e-filing), by fax, by regular mail or private delivery services, or handed in personally at the Office’s reception desk. If the user decides to file an application electronically, the Office offers the possibility of an accelerated procedure known as Fast Track (for more details please check the Office’s website).

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-13-2 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

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Trade Mark Basic Fee up to 3 Classes Additional Class Fee

Collective EUR 1 800 EUR 300

The fee must be paid in euros. Payments made in other currencies are not valid. There is no fee reduction for filing a collective mark electronically.

For more information on fees, see 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 evidence is submitted 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 10 % of the total amount due (up to a maximum amount of EUR 200).

The surcharge will not be due if the person submits proof that the payment was initiated more than 10 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 two-month time limit for payment. If payment is not received within the time limit specified, the application will be deemed to be withdrawn 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).

 Where additional class fees become payable following the rectification of a classification deficiency, a deficiency 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).

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3.4 Fee refunds upon withdrawal

On withdrawal of the CTM application the application fee (basic and class fees) will only be refunded in certain circumstances.

For more information on this 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

A filing date is accorded where the application fulfils the following requirements:

 the application fee has been paid;  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 deficiency letter will be sent out requesting the applicant to provide the missing item within two months of the 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 reimbursed. 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 10.3, Three-dimensional marks and paragraph 11, 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.

4.1.1 Fee

Article 26(2) CTMR Rule 4 and Rule 9(1)(b) CTMIR

The basic fee and, where appropriate, class fees, must be paid within one month of the filing of the application. Where the fee is not paid within one month the Office will issue a deficiency letter (see paragraph 3.2 above).

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4.1.2 Request

Article 26(1)(a) CTMR Rule 1(1)(a), Rule 9(1)(a)(i) and Rule 83(1)(e) CTMIR

The application must contain a request for the registration of a CTM.

It is strongly recommended that the CTM application is filed using the Office’s e-filing form, available in the official languages of the European Union. Forms are also made available to the public, free of charge and in all the official languages of the European Union.

4.1.3 Applicant

Article 26(1)(b) CTMR Rule 1(1)(a) and Rule 9(1)(a)(ii) CTMIR

The application must contain information identifying the applicant, specifically: the name, address and nationality of the applicant and the State in which it is domiciled or has its seat or an establishment. If the applicant has previously been allocated an ID number by the Office, it is sufficient to indicate that ID number and the applicant’s name.

4.1.4 Representation of the mark

Article 26(1)(d) CTMR Rule 1(1)(d), Rule 3 and Rule 9(1)(a)(iv) CTMIR

The application must contain a representation of the mark in accordance with Rule 3 CTMIR. For further information on the different types of marks, please see paragraph 10 below.

4.1.5 List of goods and services

Article 26 and Article 43(2) CTMR Rule 1(1)(c), Rule 2 and Rule 9(1)(a)(iii) CTMIR

The presence of a list of goods and services is a filing-date requirement. A reference in the respective field of the CTM application form to a previous CTM may be used to indicate the list of goods and services.

For applications filed electronically, please also see paragraph 5.2 below.

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4.2 Filing date receipt

4.2.1 Applications filed electronically

For electronically filed CTM applications, the system issues an immediate automatic electronic filing receipt, which contains the provisional filing date. The applicant should save or print this receipt.

4.2.2 Applications received directly by the Office

When an application is received by the Office by any other means than electronically (see paragraph 4.2.1 above), a provisional filing date is accorded and the Office issues a receipt with this filing date. The filing date will be considered the reception date if the application fulfils the filing date requirements (see paragraph 4.1 above).

4.2.3 Applications filed through national offices (intellectual property office of a Member State or Benelux Office)

If a CTM application is filed with the central industrial property office of a Member State or with the Benelux Office for Intellectual Property, it will have the same effect as if it had been filed with the Office on that same day, provided that it is received by the Office within two months from the date it was filed at the national office.

If the CTM application does not reach the Office within two months, it will be deemed to have been filed on the date that it is received by the Office.

5 Goods and Services

5.1 Classification

Every CTM application must contain a list of goods and services as a condition for according a filing date (see paragraph 4.1.5 above).

The list must be classified in accordance with the Nice Agreement (Article 28 CTMR and Rule 2(1) CTMIR).

The scope of protection defined by the original list of goods and services cannot be extended. If an applicant 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.

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5.2 Specific formality deficiency for e-filing

Rule 82(1) and Rule 9(3)(a) and Rule 9(4) CTMIR Decision EX-13-2 of the President of the Office of 26 November 2013 concerning electronic communication with and by the Office (‘Basic Decision on Electronic Communication’)

Applications filed electronically are subject to the terms and conditions concerning electronic communication with and by the Office within the User Area as established in Decision EX-13-2 (Basic Decision on Electronic Communication).

For applications filed electronically, the list of goods and services must be entered in the text fields provided for that purpose. Lists of goods and services filed as an attachment to the e-filing application, or filed separately, will not be considered to comply with the terms and conditions concerning electronic communication with and by the Office.

In such cases the Office will issue a deficiency letter requesting the payment of the difference between the reduced basic fee for applications filed by electronic means and the standard basic fee, that is to say, EUR 150.

If the deficiency is not remedied within the period set by the Office in its notification, the application will be deemed to have been withdrawn for the goods and services that were filed as an attachment to the application form or separately. If there are no goods and services entered in the text fields provided, and the deficiency is not remedied, the application will be refused.

This specific formality deficiency will not apply to collective marks.

Where available, a reference in the respective field of the CTM application form to a previous CTM may be used to indicate the list of goods and services. In this case, the list of goods and services will be imported automatically.

6 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 will 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 application is filed electronically, the indication of the name of the sender is deemed to be equivalent to a signature.

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7 Languages/Translations

Articles 119 and 120 CTMR 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.

7.1 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 different 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 submitted on its own motion, the applicant is responsible for ensuring that the translation corresponds to the first language. It is very important for the applicant to ensure the accuracy of the translation as, in particular, the translation submitted by the applicant may be used as the basis for the translation of the application into all the remaining languages of the European Union (see paragraph 7.3, Reference language for translations below). In the case of any discrepancy, the question as to which language version prevails depends on whether the first language is one of the five Office languages or not. If the first language of the application is one of the five Office languages, the first language version prevails. If the first language of the application is not one of the five Office languages, the second language prevails.

7.2 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 Office languages 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

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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 Office languages as the first language but then indicates that the second language is to be the correspondence 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.

7.3 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 as the reference language. If the first language of the application is one of the five Office languages, it will always be the reference language.

If the first language of the application is not one of the five Office languages and the applicant has submitted a translation of the goods and services in the second language, the reference language will be the second language. If no translation is submitted, the first language will be the reference language.

7.4 Translation of multilingual elements

Multilingual elements contain information on the application that needs, in principle, to be translated. 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 submitted a partial translation, a deficiency letter will be sent to the applicant, requesting that the additional translations be submitted within two months from notification of the deficiency. If the applicant fails to submit the omitted translations, then all translations submitted by the applicant will be disregarded and the Office will proceed as if no translation had been submitted. 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 acceptable. The details can be seen below in the relevant paragraphs on colour indications, mark descriptions and disclaimers (paragraphs 12, 13 and 14 respectively). Furthermore, before requesting

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translation of an application, ‘non-translatable elements’ will be identified 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).

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 13 below.)

2. colour indications: where the colour indication includes a reference 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 12 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 14 below.)

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7.5 Restriction of goods and services

Article 43(2) CTMR Rule 95(a) CTMIR

If the first language of the CTM application is one of the five Office languages, a restriction in examination proceedings can only be accepted in the first language of the application.

In cases where the first language of the application is not one of the five Office languages, 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

First language NL Second 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

First language IT Second 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.

8 Owner, Representative and Address for Correspondence

Articles 3, 5 and 92 CTMR Rule 1(1)(b), Rules 26 and 76 CTMIR

8.1 Applicant

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 the 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 must be given in full and only its legal forms may be abbreviated in a customary manner, for example, 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,

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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.

8.2 Representative

If the applicant has its domicile, principal place of business or a real and effective 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 real 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 application with the Office is placed on the Representative database and given an ID number. If the representative has been allocated an identification number by the Office, it is sufficient to indicate only that ID number and the name.

For more information on representation, see the Guidelines, Part A, General Rules, Section 5, Professional Representation.

8.3 Change of name/address

The name and address of the applicant may be amended. A change in the name of the applicant is a change that does not affect the identity of the applicant, whereas a transfer is a change in the identity of the applicant. For more information on the definition of a change of name and its comparison to a transfer, see the Guidelines, Part E, Register Operations, Section 3, CTMs as Objects of Property, Chapter 1, Transfer.

8.4 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.

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For more information on the recording of transfers of ownership see the Guidelines, Part E, Register Operations, Section 3, CTMs as Objects of Property, Chapter 1, Transfer.

9 Kind of Mark

The CTM regulation distinguishes between two kinds of marks: individual and collective.

9.1 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.

9.2 Collective marks

Articles 66 to 68 CTMR Rules 3 and 43 CTMIR

9.2.1 Character of collective marks

A collective mark is a specific type of trade mark that indicates that the goods or services bearing that mark originate from members of an association, rather than from 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 used to publicise products that 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 see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal and Community Collective Marks.

9.2.2 Applicants for collective marks

Associations of manufacturers, producers, suppliers of services, or traders that 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 met. Firstly, the applicant must be an association or a public body and secondly it must exist as an entity in itself.

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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.

9.2.3 Documents to be filed

In addition to the information to be filed when applying for an individual trade mark, applications for a Community collective trade mark require regulations governing use of the mark. These regulations must 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.

9.2.4 Examination of formalities relating to collective marks

9.2.4.1 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

9.2.4.2 Regulations governing the use submitted but with deficiencies

If the regulations have been submitted but fail to specify the required information as listed in paragraph 9.2.3 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.

9.2.5 Changes of the kind of mark (from collective to individual)

If a natural person has applied for a collective mark by mistake, that is to say, 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 legal person claims to have applied for a collective 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 obvious error, and the amendment request

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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’; or  the name of the applicant states that it is an association; or  regulations of use of the collective mark are submitted.

10 Mark Type

Articles 4 and 26, Article 7(1)(a) CTMR Rule 3 CTMIR

The categorisation of marks serves a number 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 Office 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 recorded (see paragraph 4 above, 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 inform the applicant in writing, setting a two-month time limit for observations.

Where the applicant has selected a mark type that 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 10.9, 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 word 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 for 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.

10.1 Word marks

A word mark is a typewritten mark with elements including letters (either lower or upper case), words (either in lower or upper case 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

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than one line will not be categorised as a word mark, as these marks are considered to be figurative.

Examples of acceptable word marks (for formalities’ purposes)

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)

10.2 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 (for formalities’ purposes)

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 (for formalities’ purposes)

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)

CTM 0 015 602

Pattern

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Examples of figurative marks (for formalities’ purposes)

CTM 7 190 929

Pattern

10.3 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 the product itself). The photographic or graphic representation may consist of up to six perspectives of the same shape that 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 page per picture/perspective). In such a case, a deficiency should be raised, setting a time limit for the applicant to indicate which of the representations filed should be used 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

No mark type was selected for this sign and no mark description was provided. The Office will treat this as a figurative mark.

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Examples of acceptable representations of three-dimensional marks (for formalities’ purposes)

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 (for formalities’ purposes)

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 (for formalities’ purposes)

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 grey lid. The second bottle has a blue lid, and is therefore a different 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 the views filed for the application of a three-dimensional CTM consist of different objects depicted on a single sheet of A4 paper or in one JPEG file, 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 19, Amendments to the CTM Application). In this case, the application must be rejected as the representation does not show a single three-dimensional shape.

10.4 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 (decision of 27/09/2007, R 0708/2006-4, TARZAN YELL). The lyrics of a song combined with musical notations and the tempo is acceptable. A sonograph alone is not an acceptable 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 lion, a sonograph together with a sound file is the only means of representing the mark.

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10.4.1 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 above).

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 will be deemed not to have been filed.

10.4.2 Musical notations

The applicant may file musical notation alone. This will satisfy the requirement for graphically representing the mark. In these cases an electronic sound file may be attached but it is not mandatory.

10.4.3 Sonographs

The applicant cannot file a sonograph alone (decision of 27/09/2007, R 0708/2006-4, 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 (for formalities’ purposes)

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 (for formalities’ purposes)

CTM 6 596 258

Musical notation including musical directions

10.5 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, the ratio and position of the various colours, which must be systematically arranged by associating them in a predetermined and uniform way (judgments of 24/06/2004, C-49/02, Blau/Gelb, EU:C:2004:384, § 33 and 14/06/2012, T-293/10, Colour per se, EU:T:2012:302, § 50). The representation of a colour per se mark must consist of a representation of the colour or colours without contours. 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 correction of the mark type, see paragraph 10.9 below.

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, it is highly recommended also to provide internationally recognised colour codes (judgment of 06/05/2003, C-104/01, Libertel, EU:C:2003:244, § 31-38). For more on indication of colour see paragraph 12 below.

Pursuant to Rule 3(3) CTMIR, an application for a colour per se mark may be represented by showing the colour or colours as they will be applied to the goods and services concerned. 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 (for formalities’ purposes)

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 %.

CTM 11 055 811

Colours indicated: Very light green, light green, medium green, dark green, very dark green

Description: The mark consists of five stripes of colours positioned horizontally directly one above the other, their length being several times larger than their height. The colour distribution from the top to the bottom is the following: very light green, light green, medium green, dark green and very dark green. Proportion of the five colours: 20 % each.

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10.6 Holograms

Holograms are particularly difficult to represent graphically since a paper representation does not allow the image to ‘change’ as it would naturally on holographic paper. However, with a clear mark description and sufficient 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 a single A4 sheet in the case of paper filings or in a single JPEG file in the case of e-filing.

10.7 Smell/Olfactory marks

Smell or olfactory marks are not currently acceptable. This is because a graphic representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective (judgment of 12/12/2002, C-273/00, Methylcinnamat, EU:C:2002:748). As in the case of all the other types of marks, a mark description cannot replace the graphic representation. Although it may be graphic, a description of a smell is neither clear, precise nor objective and therefore no filing date can be attributed because the mark cannot be graphically represented. Such cases (decision of 04/08/2003, R 0120/2001-2, The taste of artificial strawberry flavour) will not be rejected but rather deemed not filed. Where a purported graphic representation is filed, the application will be refused under absolute grounds for refusal (see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal).

10.8 Other marks

Other marks must contain an indication 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).

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

10.8.1 Animated marks (movement)

The number of mark representations is practically unlimited as long as they are all on a single A4 sheet in the case of paper filings, or in a single JPEG document in the case of e-filing. As the applicant’s aim is to protect the specific movement of the mark, a mark description indicating that it is a ‘movement mark’ is a formality requirement.

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.

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Examples of acceptable animated marks (movement) (for formalities’ purposes)

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 lasts between one and two seconds.

Representations: Mark representation in black and white and shades of grey only; no colour indication.

CTM 13 225 107

Description: All of the representations are on a white surface. At the outset only the text ‘Hotel?’ is readable on the white background. This text is in blue, yellow and red. The characters are divided into pairs of characters, with each pair being in a single colour. The entirety of the text is tilting forwards towards the viewer. As a result of the rotation, the previous text ‘Hotel?’ turns into ‘trivago’. This text has the same colours (blue, yellow and red) as the previous text.

Colours: Blue, red, black, white, yellow.

10.8.2 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 submitted, the colour(s) used must be indicated in words.

Examples of acceptable position marks (for formalities’ purposes)

CTM 4 717 914

Colour indication: Red

Description: Red edging, 2 mm in width, running along the edge of the ankle opening and the lace- up section.

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Examples of acceptable position marks (for formalities’ purposes)

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 fine stroke, while the second one is characterized by a sinusoidal form, drawn with a thick 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 trade mark 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 trade mark 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 goods’. The position of the mark must be clearly defined and evident from the representation and description.

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Examples of unacceptable position marks/descriptions (for formalities’ purposes)

CTM 8 682 213

Description: Trade mark protection is claimed for a stripe positioned on the casing of a soil 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 multitude of circular grooves; the stripe is positioned on a section 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.)

10.8.3 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 hoses 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 (for formalities’ purposes)

CTM 7 332 315

Description: The trade mark consists of a pipe, 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.

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.

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10.9 Correction of the mark type

10.9.1 General rules

Where the indication of the mark type in the application is clearly wrong or where there is an obvious contradiction between the mark type selected and the 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.

10.9.2 Examples of recurring mark type deficiencies

10.9.2.1 Word marks

Where the mark type chosen is ‘word’, but the mark is actually a ‘figurative’ mark such as in the examples in paragraph 10.2 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 changed back to ‘word’ mark, but the application will be rejected.

10.9.2.2 Figurative marks

If no mark type has been indicated at all and the mark is clearly figurative corresponding to the examples given above, the type of mark is inserted by the Office and the applicant is informed accordingly.

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 response within the time limit, the change of mark type will be considered as accepted and the application will proceed.

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Example 2

The following marks were 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 letter 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.

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.

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11 Series Marks

Unlike some national systems, the CTMR does 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 upper case letters or in lower case letters or in ‘normal’ script’; it will be seen as the word mark containing the female name ‘Brigitte’ three times. No deficiency letter will be sent and no changes to the mark will be accepted.

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.

11.1 Multiple figurative representations

In an application submitted through e-filing, the reproduction of the mark must be uploaded as a single 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 must contain only one representation of the mark as applied for and no additional information whatsoever (except the indication of the correct position of the mark where this is not obvious, see Rule 3(2) CTMIR).

When a paper-filed application contains more than one A4 sheet showing different marks, albeit very similar ones, the Office issues a deficiency letter requesting the 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 response to the deficiency letter within the time limit set therein, the application will be rejected.

Where an application, filed electronically or on paper, contains a JPEG file or an A4 sheet showing what might be seen as more than one mark 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.

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CTM 8 975 286

Since the JPEG file attached to the above application contained all of the above images on a single page, the entirety of variations of logos and colours and texts is deemed one single trade mark.

12 Indication of Colour

Rule 3(5) and Rule 80 CTMIR

Word marks and sound marks cannot be in 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.

Colour per se marks are a specific type of trade mark and are explained in paragraph 10.5 above.

When a mark is to be registered in colour, a coloured mark representation must be filed with the application and the 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 (green, blue, red).

Black, grey and white may be claimed as ‘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 any other colour indication.

Where a coloured 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. After filing in colour, it is not possible to change the application to a black and white mark (decision of 25/08/2010, R 1270/2010-4, Form von Prüfköpfen (3D)). The only option for the applicant is to file a new application with a black and white representation.

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.

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Expressions like ‘multicolour’, ‘of various colours’, ‘in any possible combination’ or ‘in any proportion’ are not acceptable (decision of 25/08/2010, R 1270/2010-4, Form von Prüfköpfen (3D)).

Where the indication of colour(s) has been omitted, the Office will propose the colour(s) to the applicant, setting a time limit for reply. If no reply is received before expiry of the time limit, the insertion of the colour(s) indicated by the Office will be deemed to have been accepted. 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 the colours accurately, the application will be rejected.

If it is not possible to establish the colour(s), the Office will request that the applicant provides the colours. If the applicant fails to submit an accurate colour indication within the time limit, 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 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 must (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.

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 colour claim, a colour 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 will not be accepted. When a mark representation shows, for example, a ‘colourless’ object made of glass or a similar material before a coloured 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 that is not part of the mark.

Examples of colour indications (for formalities’ purposes)

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.

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Examples of colour indications (for formalities’ purposes)

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, but also for the tail, eye, nose and ears.

CTM 10 456 762

No colour indication

No colour indication required. However, black, white and grey 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. Examples of this are where the colour indication includes a mark description, disclaimer or list of goods and services.

13 Mark Descriptions

Rule 3(3) CTMIR

A mark description is mandatory for CTM applications for mark type ‘other’. This is because an explanation of what is meant by ‘other’ is required to clarify the scope of protection (define the nature of what is to be protected). If the description is missing or 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 mark description; if a description is included, it will be removed by the Office and the applicant will be informed.

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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 used as the basis for an international application, the applicant should consider including a mark description in its CTM application, since a description is a formality requirement in some countries. For more information on international applications, see the Guidelines, Part M, International Marks.

A mark description can only define what can be seen in the mark representation or heard in a sound mark. It must not contain an interpretation 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 used 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.

A mark that consists of or includes letters from a non-EU alphabet, for which the applicant provides a transliteration or translation together with a transliteration of the term in the mark description, is acceptable.

Where the mark description does not match the representation of the mark, the Office will raise a deficiency, which 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 that require a mark description to explain the scope of protection);

2. the Office will delete the description (in all other cases, as the description is not mandatory).

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 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 mark will be used), the Office will delete the mark description and inform the applicant.

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.

Examples of this are where colours are mentioned in the mark description field, are valid as a colour indication and will be keyed-in in the relevant field for the indication of colours. Where goods and services are mentioned in the mark description field rather than in the field for goods and services, the Office will delete them from the mark

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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, for example, 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 (for formalities’ purposes)

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 upper case 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 the 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.

CTM 6 453 104

Mark type: Three-dimensional

Description: Three-dimensional trade mark consisting of a bottle shape that 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 upper case 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.

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Examples of accepted mark descriptions (for formalities’ purposes)

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 pipe, 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.

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 the fingertips of the ascending right hand; as a result of this movement, the viewer is able at this point to recognise the letter ‘T’.

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Examples of accepted mark descriptions (for formalities’ purposes)

CTM 5 090 055

Mark type: Sound

Description: The mark 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 that would not be accepted (for formalities’ purposes)

Mark type: Figurative

Mark Description: The mark consists of two hands grasping the air.

14 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 that 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 that designate the kind, quality, quantity, value or geographical origin of goods or services need not be disclaimed. Similarly, ordinary words that 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

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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 the application form. The Office only inserts the element of the trade mark representation requested as a disclaimer; no additional text such as ‘the applicant does not claim any exclusive right to element x’ is to be added in this field.

Example of an acceptable disclaimer (for formalities’ purposes)

Mark

DOODAH SOCKS

Goods

Class 25

Disclaimer

‘socks’

Examples of unacceptable disclaimers (for formalities’ purposes)

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.

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 disclaimers 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.

15 (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 effect of the right of priority is that the date of priority will count as the date of filing of the Community trade mark application for the purposes of establishing which rights take precedence.

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The principles of priority were first laid down in the Paris Convention for the Protection of Industrial Property of March 20, 1883, which has been revised several times and was last 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 regular filing of a trade mark. A regular national filing is any filing that is adequate to establish the date on which the application was filed in the country concerned, whatever may be the subsequent fate of the application. (Article 4(3) of the Paris Convention). 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 reciprocity agreement (cf. Rule 101 CTMIR — reciprocity findings by the Commission).

The States and other entities mentioned below, inter alia, are not members of any of the relevant conventions nor do they 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)  Cook Islands (CK)  Eritrea (ER)  Ethiopia (ET)  Kiribati (KI)  Marshall Islands (MH)  Micronesia (Federated States of) (FM)  Nauru (NR)  Palau (PW)  Somalia (SO)  Tuvalu (TV).

Other entities (not member of PC, WTO or reciprocity agreement):

 Abkhazia (GE-AB)  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).

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A priority claim of a previous CTM is acceptable if that CTM was granted a filing date. A priority claim of an international registration is not acceptable. This is because the principle of first filing applies (Article 29(4) CTMR — see paragraph 15.1 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 national (or Benelux) application filed in or for a State party to the Paris Convention, a Member of WTO, a State for which the Commission has confirmed reciprocity, or a CTM application. See paragraph 15.1, ‘Principle of first filing’ for information on applications that claim the 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.

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 that 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 date of the earlier application(s) are accepted.

Within three months of the receipt of the declaration of priority at the Office, the applicant must provide the Office with the file number(s) of the previous application(s).

If the mark concerned is in colour, the submission of colour photocopies concerning the earlier application(s) is mandatory.

Priority will be granted if the following requirements are met:

1. the previous application(s) is a first regular filing (‘first filing’); 2. the mark in the earlier application(s) and the CTM applied for are the same; 3. the goods and services are identical or are contained within those of the earlier

application(s) (it is sufficient that one good or service is the same); 4. the proprietor is the same; 5. the filing date of the CTM is within six months of the filing date of the earlier

application; 6. the priority must be claimed with the application or within two 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.

15.1 Principle of first filing

The previous application must be a first regular filing and cannot bear the same date as the CTM application. The Office will therefore check (i) that there was no priority claim made on the prior application(s) and (ii) that no seniority claim made for the CTM application relates to a mark that has a filing date prior to that of the application(s) from which priority is claimed. The Office will also check that the CTM application is filed no later than six months from the date of filing of the earlier application(s).

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Where priority of more than one earlier 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 15.8.1 below.

15.2 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 product or service in common.

15.2.1 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 (judgments of 19/01/2012, T-103/11, Justing, EU:T:2012:19, § 24, 20/02/2013, T-378/11, Medinet, EU:T:2013:83 and 09/04/2014, T-623/11, Milanówek cream fudge, EU:T:2014:199). An insignificant difference between two marks is one that a reasonably observant consumer will perceive only upon examining the marks side by side.

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 typeface or where one mark is in upper case letters and the other in lower case. Furthermore, a difference in punctuation or the addition of a space separating two words will not usually prevent the marks from having identity (decisions of 09/10/2012, R 0797/2012-2, Water Jel and 15/07/1998, R 0010/1998-2, 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 in paragraph 15.8.2 below).

In assessing the marks, the Office will also consider any colour indication in the earlier application.

15.2.2 Identity of the goods and services

The Office will check that there is at least one corresponding product 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, nor will it be limited to class numbers only.

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15.2.3 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 transferred 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 change of name and a transfer, see the Guidelines, Part E, Register Operations, Section 3, CTMs as Objects of Property, Chapter 1, Transfer.

15.3 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 the time limit set by the Office.

If there is no response, or if the deficiencies are not remedied within the time limit set, the Office will notify the loss of rights to the applicant and set a two-month time limit during which the applicant may request a formal, appealable decision on the loss of rights.

If the applicant formally requests a decision within the time limit, the Office will issue a formal decision on the loss of rights.

15.4 Priority documents not provided

If the priority documents are not submitted with the application, the Office will check 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 given a time 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 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.

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15.5 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.

15.6 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.

15.7 Examples of priority claims

15.7.1 First filing

In the example below, the priority claim of more than one earlier application is acceptable because the goods covered by each of those earlier applications are different and therefore the principle of first filing is met.

First filing Country Goods/services CTM filed Goods/services

6 April Italy Perfumes

11 September Perfumes, Bags,Clothing9 May Germany Bags

23 May Spain Clothing

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 first; 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

In the example below, priority cannot be claimed 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 reciprocity 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.

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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

15.7.2 Comparison of the marks

Examples of acceptable priority claims (for formalities’ purposes)

CTM application (word mark)

EVAL

Priority claim (word mark)

EVAL

CTM application (word mark)

Luna

Priority claim (word mark)

Luna

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 acceptable priority claims (for formalities’ purposes)

CTM application (figurative mark) Priority claim (figurative mark)

Examples of unacceptable priority claims (for formalities’ purposes)

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)

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Examples of unacceptable priority claims (for formalities’ purposes)

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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Further examples with regard to word marks (for formalities’ purposes)

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

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 (for formalities’ purposes)

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

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Examples regarding identity between figurative signs as compared to word marks (for formalities’ purposes)

First trade mark CTM application the same not the same

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

Further examples with regard to figurative marks (for formalities’ purposes)

First trade mark CTM application the same not the same

X

X

®

X*

* The symbols ™ and ® are not considered parts of the mark.

15.7.3 Comparison of the goods and services

The first example below is the most usual 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

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First filing Country JP application No G&S CTM filed G&S CTM

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 the priority claims will be accepted although, the Canadian application does not constitute a first filing for ‘hats’ (‘hats’ appear in the French application, which had been 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

15.7.4 Priority claims based on series marks

A series of trade marks means a number of trade marks that resemble each other in material details and differ only in terms of non-distinctive character. Whereas the CTMR 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 series mark, two or more slightly different mark representations will be seen. The priority claim is acceptable with regard to the one reproduction that 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

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15.7.5 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 undoubtedly the same.

15.7.6 Priority claims involving collective marks

Priority can be claimed from a collective mark when applying for an individual Community trade mark and vice versa.

16 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 identification 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 CTMR does not protect the display at other, national, exhibitions. The exhibitions can be found on the 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 15 above.

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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.

17 Seniority

Article 34 CTMR Rules 8, 28 and Rule 96(2) CTMIR Communication 2/00, Decision EX-03-5 and Decision EX-05-5 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 that are identical to or contained within those for which the earlier trade mark has been registered, 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, the proprietor will be deemed to continue to have the same rights as he or she would have had if the earlier trade mark had continued to be registered.

This means that the CTM application represents a consolidation 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 submitted 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 EU country. No seniority claim is possible, however, for an earlier CTM registration or local registrations, even if the territory is part of the European Union (e.g. Gibraltar).

17.1 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 used in the databases of the national offices.

To enhance harmonisation between the Office and participating IP offices, a list with the required format for seniorities has been established (see Annex 1). This list

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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 corresponds to the format used at the national level.

17.2 Seniority examination

A valid claim must contain the indications 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 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 online. 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 ask the proprietor for a copy by means of a deficiency letter. Pursuant to Article 3 of Decision EX-03-5, the copy of the relevant registration must consist of a copy (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, and 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 lapsed 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 will 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 borne 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

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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.

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 01/05/2004 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.

17.3 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 ensure that these requirements are met. 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 in paragraph 15.2.1.

17.4 Goods and services

Applicants may claim seniority for part of the goods and services 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 that are found in the earlier mark to the extent they are also found in the CTM application’ (generic seniority claim).

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17.5 Treatment of seniority examination deficiencies

If the claim is not valid, the earlier registration is not identical to the CTM application, the seniority is claimed out of time (i.e. after the two-month time limit following the 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 rights. At the same time the applicant will be informed that it can ask for a formal decision within two months of the notification.

If the applicant formally requests a decision within the time limit, the Office will issue a formal decision on the rejection of the seniority claim.

17.6 Examples of seniority claims

Example of an acceptable seniority claim (for formalities’ purposes)

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 (for formalities’ purposes)

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)

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For further examples of acceptable and unacceptable seniority claims, see paragraph 15.8.2 above.

18 Transformation

Transformation is a legal feature introduced in the Madrid Protocol to soften the consequences of the five-year dependency period between the international registration and the 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 will be treated as if it had been filed on the date of the designation of the EU in the international registration and will enjoy the same priority, if any. For more details on transformation, see the Guidelines, Part M, International Marks.

19 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 the 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 withdrawal or restrictions, see the Guidelines, Part B, Examination, Section 1, Proceedings.

19.1 Amendments to the representation of the mark

The Office’s 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 must 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.

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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 mark upon request. This is because the unusual positioning of the mark will be considered an obvious mistake.

If a priority 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 (for formalities’ purposes)

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 0851/1999-2, TOP FLOW)

Examples of unacceptable amendments (for formalities’ purposes)

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 allowed as the correct English spelling for this word is ‘ELECTROLYTIC’. Consequently the mark as filed had one erroneous letter whilst the amendment proposal would have two 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.

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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.

Notwithstanding the aforementioned principles and examples, any alteration of the mark that would be allowable after registration will also be allowable in respect of a CTM application.

Regarding alterations of a registered CTM, please refer to the Guidelines, Part E, Register Operations, Section 1, Changes in a Registration.

20 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 its CTM application or registered CTM. For more information on conversion see the Guidelines, Part E, Section 2, Conversion.

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Annex 1:

Required format for seniorities

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0 0 0 2 9 1 A 1 2 3 4 5 6 7 8 9 10 11 12 13

M 1 0 1 2 6 1 2 3 4 5 6 7 8 9 10 11 12 13

M 0 0 0 0 3 6 5 B 1 1 2 3 4 5 6 7 8 9 10 11 12 13

B 0 0 0 0 3 6 5 5 Y A S T 1 2 3 4 5 6 7 8 9 10 11 12 13

2 5 0 8 4 1 E 1 2 3 4 5 6 7 8 9 10 11 12 13

6 1 3 1 5 9 A 1 2 3 4 5 6 7 8 9 10 11 12 13

9 2 4 5 6 8 0 1 1 2 3 4 5 6 7 8 9 10 11 12 13

0 4 8 9 0 3 A 1 2 3 4 5 6 7 8 9 10 11 12 13

4 1 1 0 0 2 3 A 1 2 3 4 5 6 7 8 9 10 11 12 13

9 9 7 5 6 8 0 1 2 3 4 5 6 7 8 9 10 11 12 13

SI: Two obligatory digits which identify the year of

registration ‘yy’ followed by the number (a value greater

or equal than 70000).

ExampleSI Position 2 0 0 0 8 5 6 8 01 2 3 4 5 6 7 8 9 10 11 12 13

3 9 5 0 1 3 2 5 1 2 3 4 5 6 7 8 9 10 11 12 13

Z 9 5 0 0 3 2 1 2 3 4 5 6 7 8 9 10 11 12 13

Z 2 0 0 0 1 0 2 2 1 2 3 4 5 6 7 8 9 10 11 12 13

3 0 2 0 1 1 0 1 3 3 6 0 1 2 3 4 5 6 7 8 9 10 11 12 13

1 3 3 1 9 6 F 1 2 3 4 5 6 7 8 9 10 11 12 13

7 7 0 8 6 9 B 1 2 3 4 5 6 7 8 9 10 11 12 13

V R 2 0 1 0 0 0 3 8 2 1 2 3 4 5 6 7 8 9 10 11 12 13

3 4 6 8 8 A 1 2 3 4 5 6 7 8 9 10 11 12 13

LV

ES

BG

MT

CZ RO

SE

IE

DK IT

LT

Color key Registration number Complete with given letter

Complete as per example Complete if value is given

Please give year Unused or undefined box (for the moment)

Zeros must added in front if the

registration number of digits is lower than

expected.

Example Example 0 1 3 1 5 ExampleAT Position EE Position 1 2 3 4 5 6 7 8 9 10 11 12 13 Position Since 1992

AT: The number could be followed by one letter (A, B, C …

representing the first, second … partial transfer)

Example

Position

Since 10/03/1982

LV: The first two positions must always be ‘M’, and a

space ‘ ‘, the next two positions are obligatory (zeros must

be added in front if the number has less than 2 digits) and

are followed by a space ‘ ‘. The last 3 positions are Example

Position

BG: If there is, the first letter indicates it is a ‘mirror

entry’ in the Bulgarian registry. In that case the number

ends also with ‘ST’ (which stands for ‘seniority’). The

number could be followed by one or two letters before

the letters ST: letter ‘Y’ was used until 1999 to

differentiate trade marks registered only for services

AND/OR letter A, B, C, D ... indicates a partial transfer of

the trade mark.

Example 1 9 2 8 6 9 7

ES: The first position must always be ‘M’, the next

obligatory seven digits identify the registration identifier

(zeros must be added in front if the number has less than

7 digits), followed by a letter ‘B’, ‘C’, ‘D’ ... and a number

if there are and used in case of partial transfer / division.

ExampleFI Position FI: The number could be followed by one letter (A, B, C …

representing the first, second, third … partial

transfer/division)

obligatory (zeros must be added in front if the number has

less than 3 digits).

Example 4 5 6 8 Position 1 2 3 4 5 6 7 8 9 10 11 12 13

Since 05/1900

PL Example 1 7 4 8 4 6Position 1 2 3 4 5 6 7 8 9 10 11 12 13 Since 28/12/1918

PL: Only the number must appear (letters or characters

must NOT be considered)

BX Position 1 2 3 4 5 6 7 8 9 10 11 12 13 Since 1971

Example 6 5 3 1 4 Example 1 8 5 8 0 0 4 Example 5 5 1 1 1CY Position 1 2 3 4 5 6 7 8 9 10 11 12 13 Position 1 2 3 4 5 6 7 8 9 10 11 12 13 PT Position 1 2 3 4 5 6 7 8 9 10 11 12 13 Example

Position

FR Example

Position

From 1976 to 1991 and as from 2000

From 1992 to 1999

Example

Position

CZ: The number could be followed by one letter (A, B, C …

representing the first, second, third … partial transfer)

FR: Two obligatory positions which identify the year ‘yy’

followed by 6 obligatory digits

RO: If there are, the first 2 positions (one digit and/or

letter ‘R’ e.g. ‘2R’) must NOT be considered.

The number could be followed by one letter (A, B, C …

representing the first, second, third … partial transfer). Example D D 6 5 2 3 8 4 ExampleDE Position 1 2 3 4 5 6 7 8 9 10 11 12 13

Used in GDR only

GB Position DE: The first two positions must always be two 'D'

followed by the digits in the number.

GB: The number could be followed by one letter (A, B, C

..., depending on how many parts - used in case the ID is

divided).

Example 6 9 2 5 6 6 Position 1 2 3 4 5 6 7 8 9 10 11 12 13

Example

Example 6 1 3 5 2 3 Example 2 5 1 1 1 2 SI Position Position 1 2 3 4 5 6 7 8 9 10 11 12 13

DE Until 10/1994 Example

Position

From 1994 to 2007

GR Position 1 2 3 4 5 6 7 8 9 10 11 12 13 Until 1999 Example

Position

HR Until 2000 DE: The first position must always be '3', the next

obligatory 2 positions identify the year 'yy' followed by 5

obligatory digits (zeros must be added in front if the

Example

Position

From 2000 Since 2000

number has less than 5 digits). If number ends with a

‘dot’ and a ‘number’ then delete both.

HR: The first position must always be 'Z', the next

obligatory positions identify the year (2 or 4 digits)

followed by 4 obligatory digits.

SI: Four obligatory digits which identify the year of

registration ‘yyyy’ followed by the number (a value greater

or equal than 70000).

Example Example 0 2 0 8 6 9 ExampleDE Position Since 2008

HU Position 1 2 3 4 5 6 7 8 9 10 11 12 13 SK Position DE: The first 2 positions must always be '3' and '0', the

next obligatory 4 positions identify the year 'yyyy'

followed by 6 obligatory digits (zeros must be added in

Example

Position

Since 1989

SK: The number could be followed by one letter (A, B, C …

representing the first, second … partial transfer).

front if the number has less than 6 digits). If number ends

with a ‘dot’ and a ‘number’ then delete both.

IE: The number could be followed by one letter. INTERNATIONAL REGISTRATION (WIPO)

Example

Position

Since 1894

Example 0 0 0 1 3 7 5 2 6 2 Example 0 1 6 5 7 1 2 B Position 1 2 3 4 5 6 7 8 9 10 11 12 13 Position 1 2 3 4 5 6 7 8 9 10 11 12 13

DK: The first 3 positions must always be ‘VR’ (registered

individual trade mark), ‘VG’ (registered regular trade

mark in old law), or ‘FR’ (registered collective trade mark)

Example

Position

Since 10/1993

If there are, the first 2 positions (one digit and/or letter ‘R’

e.g. ‘2R’) must NOT be considered. The number could be

followed by one letter A, B, C, ….indicating that the IR

AND a space ‘ ‘, the next obligatory four positions identify

the year ‘yyyy’ followed by a space ‘ ‘, followed by 5

obligatory digits (zeros must be added in front if the

number has less than 5 digits).

LT: The number could be followed by one letter (A, B, C …

representing the first, second, … partial transfer) was subject to a partial transfer (‘partial assignment’ in

the language of the Madrid Agreement

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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 ..................................................................................... 5 1.1 Reasoned objection ................................................................................... 5 1.2 Dialogue with the applicant .......................................................................5 1.3 Decision ......................................................................................................6

European criteria........................................................................................ 7 1.5 Irrelevant criteria ........................................................................................ 7

1.5.1 Term not used................................................................................................. 8 1.5.2 Need to keep free ........................................................................................... 8 1.5.3 Factual monopoly ........................................................................................... 8 1.5.4 Double meaning ............................................................................................. 8

1.6 Scope of objections on the goods and services ......................................9 1.7 Timing of objections ................................................................................ 10 1.8 Disclaimers ............................................................................................... 10

2 Absolute Grounds (Article 7 CTMR)....................................................... 11 2.1 Article 7(1)(a) CTMR ................................................................................. 11

2.1.1 General remarks........................................................................................... 11 2.1.2 Examples of trade mark applications refused or accepted under

Article 7(1)(a) CTMR .................................................................................... 13 2.1.2.1 Smell/olfactory marks ................................................................................13 2.1.2.2 Taste marks...............................................................................................14 2.1.2.3 Sound marks .............................................................................................14 2.1.2.4 Movement marks.......................................................................................16 2.1.2.5 Colour marks .............................................................................................18 2.1.2.6 Position mark.............................................................................................19 2.1.2.7 3D representation of a space ....................................................................20

2.1.3 Relationship with other CTMR provisions .................................................... 20

2.2 Distinctiveness (Article 7(1)(b) CTMR).................................................... 20 2.2.1 General remarks........................................................................................... 20 2.2.2 Word elements.............................................................................................. 21 2.2.3 Titles of books............................................................................................... 22 2.2.4 Colours ......................................................................................................... 23

2.2.4.1 Single colours............................................................................................23 2.2.4.2 Colour combinations..................................................................................24

2.2.5 Single letters ................................................................................................ 25 2.2.5.1 General considerations..............................................................................25 2.2.5.2 Examples...................................................................................................26

2.2.6 Slogans: assessing distinctive character...................................................... 27 2.2.7 Simple figurative elements ........................................................................... 31 2.2.8 Commonplace figurative elements ............................................................... 32 2.2.9 Typographical symbols................................................................................. 32 2.2.10 Pictograms.................................................................................................... 33 2.2.11 Common/non-distinctive labels..................................................................... 34 2.2.12 Three-dimensional trade marks.................................................................... 35

2.2.12.1 Preliminary remarks ..................................................................................35 2.2.12.2 Shapes unrelated to the goods or services themselves ............................36 2.2.12.3 Shape of the goods themselves or shapes related to the goods or

services. ....................................................................................................36 2.2.12.4 Shape of the packaging.............................................................................41

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2.2.13 Pattern marks ............................................................................................... 42 2.2.14 Position marks .............................................................................................. 46 2.2.15 Sound marks................................................................................................. 47

2.3 Descriptiveness (Article 7(1)(c) CTMR)................................................... 49 2.3.1 General remarks........................................................................................... 49

2.3.1.1 The notion of descriptiveness....................................................................49 2.3.1.2 The reference base ...................................................................................49 2.3.1.3 Characteristics mentioned under Article 7(1)(c) CTMR .............................51

2.3.2 Word marks .................................................................................................. 52 2.3.2.1 One word...................................................................................................52 2.3.2.2 Combinations of words..............................................................................53 2.3.2.3 Misspellings and omissions .......................................................................56 2.3.2.4 Abbreviations and acronyms .....................................................................57 2.3.2.5 Slogans .....................................................................................................58 2.3.2.6 Geographical terms ...................................................................................59 2.3.2.7 Terms describing subject matter in goods or services...............................63 2.3.2.8 Single letters and numerals .......................................................................66 2.3.2.9 Names of colours ......................................................................................68 2.3.2.10 Plant variety names...................................................................................68 2.3.2.11 Names of banks and newspapers/magazines ...........................................70 2.3.2.12 Names of hotels ........................................................................................70 2.3.2.13 Combinations of names of countries/cities with a number indicating a

year ...........................................................................................................71 2.3.2.14 INN codes..................................................................................................71

2.3.3 Figurative marks ........................................................................................... 72 2.3.4 Figurative threshold ...................................................................................... 73

2.3.4.1 Preliminary remarks ..................................................................................73 2.3.4.2 Assessment of the figurative threshold......................................................74

2.4 Customary signs or indications (Article 7(1)(d) CTMR) ......................... 79 2.4.1 General remarks........................................................................................... 79 2.4.2 Point in time of a term becoming customary ................................................ 80 2.4.3 Assessment of customary terms .................................................................. 80 2.4.4 Applicability of Article 7(1)(d) CTMR in relation to plant variety names ....... 81

2.5 Shapes with an essentially technical function, substantial aesthetic value or resulting from the nature of the goods (Article 7(1)(e) CTMR)........................................................................................................ 81 2.5.1 General remarks........................................................................................... 81 2.5.2 Shape that results from the nature of the goods .......................................... 83 2.5.3 Shape of goods necessary to obtain a technical result ................................ 84 2.5.4 Shape that gives substantial value to the goods .......................................... 86

2.6 Acquired distinctiveness ......................................................................... 88 2.6.1 Introduction ................................................................................................... 88 2.6.2 Request ........................................................................................................ 88 2.6.3 The point in time ........................................................................................... 88

2.6.3.1 Examination proceedings ..........................................................................88 2.6.3.2 Cancellation Proceedings..........................................................................89

2.6.4 Consumer ..................................................................................................... 89 2.6.5 Goods and Services ..................................................................................... 90 2.6.6 Territorial Aspects......................................................................................... 90

2.6.6.1 Special provisions with respect to the accession of new Member States ..91 2.6.6.2 3D marks, colours per se and figurative trade marks ................................91 2.6.6.3 Language area ..........................................................................................91 2.6.6.4 Extrapolation .............................................................................................92

2.6.7 Standard of proof .......................................................................................... 94

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2.6.8 Assessment of the evidence......................................................................... 95 2.6.8.1 Opinion polls and surveys .........................................................................96 2.6.8.2 Market share, advertising and turnover .....................................................97 2.6.8.3 Declarations, affidavits and written statements .........................................97 2.6.8.4 Prior registrations on acquired distinctiveness ..........................................98 2.6.8.5 Other means of evidence ..........................................................................98 2.6.8.6 Manner of use ...........................................................................................99 2.6.8.7 Length of use.............................................................................................99 2.6.8.8 Post-filing date evidence .........................................................................100

2.6.9 Consequences of Acquired Distinctiveness ............................................... 100

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1 General Principles

1.1 Reasoned objection

When there is an absolute ground for refusal, a reasoned objection will be issued that specifies the individual grounds for refusal and provides clear and distinct reasoning for each ground separately. Piecemeal objections (so-called step-by-step objections) should be avoided.

Each of the grounds for refusal listed in Article 7(1) CTMR is independent of the others and calls for separate examination.

Even when some grounds for refusal overlap, each ground of refusal must be given separate reasoning in the light of the general interest underlying each of them.

For example, where a word mark is found to have a semantic meaning that makes it objectionable under both Article 7(1)(b) and (c) CTMR, the notification of grounds of refusal should deal with each of these grounds in separate paragraphs. In such a case, it will be clearly indicated whether the lack of distinctiveness arises out of the same, or different, considerations from those that lead to the mark being deemed descriptive.

Any one of the grounds listed in Article 7(1) CTMR is sufficient for refusal of a Community trade mark. However, the Office will list all the grounds for refusal that are applicable at each stage.

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. In these cases, the party will always be given the opportunity to comment thereon.

1.2 Dialogue with the applicant

During examination proceedings, the Office will seek a dialogue with the applicant.

At all stages of the proceedings, the observations submitted by the applicant will be considered carefully.

The Office will likewise consider, of its own motion, new facts or arguments that plead in favour of acceptance of the mark. The application can only be refused if the Office is convinced that the objection is well founded at the point in time when the decision is taken.

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, EU:C:2002:506, § 28).

 No observations submitted by the applicant

Where the applicant has not submitted any observations, if the application is to be refused, the notification to the applicant will include the original objection letter(s), state that the application is ‘hereby refused’, and contain a notice on the availability of an appeal.

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 Observations submitted by the applicant

If the applicant contests the reasons given in the original notification, the refusal will first provide the original reasoning given, and then address the arguments of the applicant.

Where the Office needs to provide new facts or arguments to sustain a refusal, the applicant must be given the opportunity of commenting on these before a final decision is taken.

 Restriction of goods and services

Where the applicant tries to overcome the objection by restricting the list of goods and services, it is possible that the restriction may give rise to a new ground for refusal, for example, deceptiveness in addition to descriptiveness. In this case another objection letter will 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 that is restricted by a condition that the goods or services do not possess a particular characteristic should not be accepted (judgment of 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 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 that are worded in a positive way are usually acceptable, such as ‘books about Chemistry’.

 Proof of acquired distinctiveness

As regards the proof of acquired distinctiveness (Article 7(3) CTMR), 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 must send its proof of use is after the objection letter and before the final decision is taken by the Office. In that regard, the applicant may file a request for an extension of time limits after the objection letter pursuant to Rule 71 CTMIR.

If the mark is accepted on the basis of Article 7(3) CTMR, then no refusal letter will be sent.

If the proof of use does not demonstrate acquired distinctiveness, the refusal will contain the reasoning as to why the mark falls foul of any of the grounds mentioned in Article 7(1) CTMR and separate reasoning as to why the applicant’s claim of acquired distinctiveness has failed.

1.3 Decision

After the dialogue with the applicant has taken place, the Office will take a decision to refuse the application if it considers that the objection is well founded despite the facts and arguments submitted by the applicant.

The decision will include the original objection, summarise the applicant’s arguments, address the applicant’s arguments and submissions, and give reasons and a detailed explanation as to why they are not convincing.

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If the applicant has submitted evidence of acquired distinctiveness by use and this is considered sufficient to overcome the objection, then the Office will issue a communication that rebuts any new argument raised by the applicant and maintains the objection(s), but accepts the trade mark based on the acquisition of distinctiveness by use. If the evidence is not considered sufficient, a decision will be issued. It will contain a separate reasoning on the claim of acquired distinctiveness.

The objection can be waived in part if the Office considers that (i) some of the grounds have been overcome or (ii) all grounds have been overcome for some of the goods and services.

The decision will state that the application has been refused (either in its entirety or partly, with an indication of the rejected goods and services) and will contain a notice of the availability of an appeal.

1.4 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 application from registration if a ground for refusal pertains in only part of the European Union (‘EU’).

That means that it suffices for a refusal if the trade mark is descriptive, or lacks distinctive character, in any official language of the EU (judgment of 03/07/2013, T-236/12, Neo, EU:T:2013:343, § 57).

As regards other languages, a refusal will be raised if the trade mark is objectionable under Article 7(1) CTMR in a language understood by a significant 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, EU:T:2012:424, § 35-36).

Where the objection is not based on a semantic meaning of a word, the ground for refusal will normally pertain to the European Union 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.

1.5 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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1.5.1 Term not used

The fact that a descriptive use of the term applied for cannot be ascertained is irrelevant. Examination of Article 7(1)(c) CTMR has to be made 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 (judgment of 23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 33).

1.5.2 Need to keep free

It is frequently claimed that other traders do not need the 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 public 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’) (judgments of 04/05/1999, C-108/97 and C-109/97, Chiemsee, EU:C:1999:230, § 35; 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 61).

Whether there are synonyms or other even more usual ways of expressing the descriptive meaning is thus irrelevant (judgment of 12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 42).

1.5.3 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.

1.5.4 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 refusal under Article 7(1)(c) CTMR if at least one of the possible meanings of the term is descriptive in relation to the relevant goods and services (judgment of 23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 32; confirmed by judgment of 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 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 trade mark applied for (which are unrelated to the goods/services concerned) are irrelevant. Equally, when the trade mark applied for is a composite word mark, what matters for examination purposes is the meaning, if any, associated with the sign considered as a whole, and not the possible meanings of its individual elements considered separately (judgment of 08/06/2005, T-315/03, Rockbass, EU:T:2005:211, § 56).

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1.6 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 deceptiveness, have to be assessed with respect to the goods and services actually claimed.

If an objection is raised, the Office must state specifically which ground (or grounds) for refusal apply to the mark in question, for each product or service claimed.

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 that have a sufficiently direct and specific link to each other (judgment of 02/04/2009, T-118/06, Ultimate fighting championship, EU:T:2009:100, § 28). Where the same ground or grounds for refusal is/are given for a category or group of goods or services, only general reasoning for all of the goods and/or services concerned may be used (judgment of 15/02/2007, C-239/05, The Kitchen Company, EU:C:2007:99, § 38).

Sign Case number

BigXtra C-253/14 P

The Court confirmed the refusal in respect of goods and services in Classes 16, 35, and 41 to 43 by means of a general reasoning because of a sufficiently concrete and direct link for all these goods and services. For all of them, ‘BigXtra’ will be perceived as indicating price reductions or other advantages (para. 48).

Sign Case number

PIONEERING FOR YOU T-601/13

The Court allowed general reasoning in respect of goods and services in Classes 7, 9, 11, 37 and 42 because the promotional meaning of the sign applied for would be perceived identically for each of them (paras 36-37).

As regards descriptiveness, an objection applies not only to those goods/services for which the term(s) making up the trade mark applied for is/are directly descriptive, but also to the broad category that (at least potentially) contains an identifiable subcategory or specific goods/services for which the mark applied for 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 (judgment of 07/06/2001, T-359/99, EuroHealth, EU:T:2001:151, § 33).

An objection also arises for those goods and services that are directly linked to those for which the descriptive meaning pertains. Furthermore, if the descriptive meaning applies to 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, EU:T:2002:79, for a number of goods and services that are in conjunction with, or are applied in, offering aid to car drivers at a distance).

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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.

1.7 Timing of objections

Objections should be raised as early as possible. In the majority of cases, the Office raises its objection ex officio before the publication of the CTMA.

In any event, the Office can reopen examination of the CTMA at any time before registration, that is to say, even after publication (judgment of 08/07/2004, T-289/02, Telepharmacy Solutions, EU:T:2004:227, § 60), for example:

 when the Office receives observations from third parties relating to the existence of an absolute ground for refusal. The Office can then decide to reopen the examination procedure as a result of these observations (Article 40 CTMR). See the Guidelines, Part B, Examination, Section 1, Proceedings, paragraph 3.1.

 in rare cases where the mark had been clearly published by mistake.

In the case of international registrations designating the EU, the Office can raise an objection 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.

1.8 Disclaimers

Article 37(2) CTMR allows for the possibility of the Office requesting, as a condition of registration, that an element of a mark that is not distinctive should be disclaimed. In practice, the Office will generally avoid 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 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’ with a figurative distinctive element, the individual word 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 disclaimer of a non-distinctive element in its application, the disclaimer should stay even if the Office does not consider it

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necessary. Disclaimers of distinctive elements must be refused by the Office since they would result in a trade mark with an unclear scope of protection.

The following paragraphs address each individual subsection of Article 7(1) CTMR in alphabetical order, beginning with Article 7(1)(a) CTMR and ending with Article 7(1)(e) CTMR. This is followed by a paragraph regarding Article 7(3) CTMR (acquired distinctiveness).

The second part addresses the remaining individual subsections of Article 7(1) CTMR from Article 7(1)(f) to (k) CTMR and ends with a 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 the Office’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 services of one undertaking from those of other undertakings.

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 sign, (b) it must be capable of being represented graphically, 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, EU:C:2007:51, § 28).

a) Signs

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.

However, 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 sign. Thus, abstract concepts and ideas or general characteristics of goods are not specific enough to qualify as a sign, as they could apply to a variety of different manifestations (judgment of 21/04/2010, T-7/09, Spannfutter, EU:T:2010:153, § 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

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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 multitude of different appearances (judgment of 25/01/2007, C-321/03, Transparent bin, EU:C:2007:51, § 35, 37).

b) Graphic representation

A sign that is not capable of being represented graphically will be excluded 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, Methylcinnamat, EU:C:2002:748, § 46-55, and judgment of 06/05/2003, C-104/01, Libertel, EU:C:2003:244, § 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.

Moreover, in cases where a sign is defined by both a graphic representation and a textual description, in order for the representation to be precise, intelligible, and objective, it must coincide with what can be seen in the graphic representation (decision of 23/09/2010, R 443/2010-2, RED LIQUID FLOWING IN SEQUENCE OF STILLS (al.).

Sign Case number

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’.

CTM 8 316 184 14/06/2012, T-293/10, Colour per se,

EU:T:2012:302

The General Court considered that the mark’s description was too difficult to understand. A sign so defined is not a colour mark per se but a three-dimensional mark, or figurative mark, that corresponds to the external appearance of a particular 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 still have contained an inherent contradiction insofar as the true nature of the sign is concerned (paras 64 and 66).

c) Distinguishing character

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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 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’.

2.1.2 Examples of trade mark applications refused or accepted under Article 7(1)(a) CTMR

For formalities issues regarding some of the types of marks mentioned below, see the Guidelines, Part B, Examination, Section 2, Formalities, paragraph 9.

2.1.2.1 Smell/olfactory marks

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 (judgment of 12/12/2002, C-273/00, Methylcinnamat, EU:C:2002:748, § 69-73).

There is currently no means of graphically representing smells in a satisfactory way. There is no generally accepted international classification of smells that 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, Odeur de fraise mûre, EU:T:2005:380, § 34).

The following are examples of possible ways of graphically representing a smell but none is satisfactory:

 Chemical formula

Few people would recognise the odour in question from such a formula.

 Odour sample

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.

 Graphic representation and description in word

The requirements of graphical representation are not satisfied by:

o a graphic representation of the smell o a description of the smell in words o a combination of both (graphic representation and description in words).

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Sign Case No

Mark description: Smell of ripe strawberries

CTMA 1 122 118

27/10/2005, T-305/04, Odeur de fraise mûre, EU:T:2005:380, § 34 The Court considered that 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 that emits a smell supposedly identical to the olfactory sign at issue, and not the smell claimed, and therefore does not amount to a graphic representation of the olfactory sign.

2.1.2.2 Taste marks

The arguments mentioned above under paragraph 2.1.2.1 are applicable in a similar way for taste marks (decision of 04/08/2003, R 120/2001-2, The taste of artificial strawberry flavour (gust.)).

2.1.2.3 Sound marks

According to the judgment of 27/11/2003, C-283/01, Musical notation, EU:C:2003:641, § 55, a sound must be represented graphically ‘particularly by means of images, lines or characters’ and its representation must be ‘clear, precise, self-contained, easily accessible, intelligible, durable and objective’.

The following are not valid means to graphically represent a sound:

 Description of a sound in words

A description such as certain notes of a musical play, e.g. ‘the first 9 bars of Für Elise’, or a description of the sound in words, e.g. ‘the sound of a cockcrow’, is not sufficiently precise or clear and therefore does not make it possible to determine the scope of the protection sought (judgment of 27/11/2003, C-283/01, Musical notation, EU:C:2003:641, § 59).

 Onomatopoeia

There is a lack of consistency between the onomatopoeia itself, as pronounced, and the actual sound or noise, or the sequence of actual sounds or noises, that it purports to imitate phonetically (judgment of 27/11/2003, C-283/01, Musical notation, EU:C:2003:641, § 60).

 Musical notes alone

A sequence of musical notes alone, such as E, D#, E, D#, E, B, D, C, A, does not constitute a graphical representation. Such a description, which is neither clear, nor precise nor self-contained, does not make it possible, in particular, to

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determine the pitch and the duration of the sounds forming the melody for which registration is sought and that constitute essential parameters for the purposes of knowing the melody and, accordingly, of defining the trade mark itself (judgment of 27/11/2003, C-283/01, Musical notation, EU:C:2003:641, § 61).

Example of an unacceptable sound mark

CTM 143 891 R 0781/1999-4 (‘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).

The following are valid means of representing a sound graphically:

 Musical notations (stave)

A stave divided into bars and showing, in particular, a clef (a treble, bass, alto or tenor clef), musical notes and rests whose form (for the notes: semibreve, minim, crotchet, quaver, semiquaver, etc.; for the rests: semibreve rest, minim rest, crotchet rest, quaver rest, etc.) indicates the relative value and, where appropriate, accidentals (sharp, flat, natural) – all of this notation determining the pitch and duration of the sounds – constitutes a faithful representation of the sequence of sounds forming the melody in respect of which registration is sought (judgment of 27/11/2003, C-283/01, Musical notation, EU:C:2003:641, § 62).

 MP3 files with another suitable graphic representation

The applicant may file one sound file as an attachment to the electronic application form (Decision No EX-05-3 of the President of the Office of 10 October 2005 concerning electronic filing of sound marks, Article 2(2)). However such sound files must be filed together with a suitable graphic representation.

One graphic representation that may be filed along with an electronic file is a sonogram, i.e. a graphical representation of a sound, showing the distribution of energy at different frequencies, especially as a function of time, as long as the diagram itself indicates the scaling, orientation (rotation) and translation of the axes (time and frequency).

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Examples of graphical representations which are acceptable:

Sign Reasoning Case No

Stave divided into bars and showing, in particular, a clef, musical notes and rests

CTM 1 637 859

Sonogram indicating time (x- axis), frequency (y-axis) and

intensity (in colour), along with an electronic file

CTMA 11 923 554

2.1.2.4 Movement marks

A movement mark may only be refused registration under Article 7(1)(a) CTMR when a ‘reasonably observant person with normal levels of perception and intelligence would, upon consulting the CTM register, [not be] able to understand precisely what the mark consists of, without expending a huge amount of intellectual energy and imagination (decision of 23/09/2010, R 443/2010-2, RED LIQUID FLOWING IN SEQUENCE OF STILLS (al.), para. 20).

Therefore, in most cases, in order for the representation of a movement mark to be clear, precise, intelligible, and objective, the graphic representation must be accompanied by a description. The description must clearly explain the movement for which protection is sought and must be coherent with what can be seen in the representation of the sign.

The number of stills will depend on the movement concerned. No limit has been imposed.

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Examples of graphical representations that are acceptable for movement marks:

Sign Case No

CTM 8 581 977 RED LIQUID FLOWING IN SEQUENCE OF STILLS

(MOVEMENT MARK)

R 443/2010 2

Description: This is a motion mark in colour. The nature of the motion is that of a trailing ribbon with a liquid-like appearance (‘ribbon’). The ribbon flows around and ultimately into a spherical shape (‘sphere’). The motion takes approximately 6 seconds. The stills in the sequence are spaced approximately 0.3 seconds apart and are evenly spaced from the beginning to the end of sequence. The first still is at top left. The last still (20th) is the middle one in the bottom row. The stills follow a progression from left to right within each row, before moving down to the next row. The precise sequence of the stills is as follows: In the 1st still, the ribbon enters the frame in the upper edge of the frame and flows down the right edge of the frame, before flowing upward in the 2nd to 6th stills. During that phase of motion (in the 4th still) the end of the ribbon is shown, producing the effect of a trailing ribbon. In the 6th to 17th stills, the ribbon flows counterclockwise around the frame. From the 9th still onwards, the sphere appears in the centre of the frame. The interior of the sphere is the same colour as the ribbon. The ribbon flows around the sphere. In the 14th still, the ribbon enters the sphere, as if being pulled inside. In the 15th to 17th stills, the ribbon disappears inside the sphere. In the 19th and 20th stills, the sphere moves toward the viewer, gaining in size and ending the motion.

Sign Case No

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 upwards adjacent to the first segment and then downwards adjacent to the second segment, while individual chords within each segment turn from dark to light. The stippling in the mark is for shading only. The entire animated sequence lasts between one and two seconds.

CTM 5 338 629

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Examples of graphical representations that are not acceptable for movement marks:

Sign Case

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.

CTM 9 742 974

The Office rejected the application as it was not possible to establish the precise movement from the description provided along with the graphic representation

2.1.2.5 Colour marks

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 constancy of a graphical representation, which is a condition for the ability to act as a trade mark (see also decision of 27/07/2004, R 730/2001-4, YELLOW/BLUE/RED(col.)).

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 uniformity required by Article 4 CTMR (judgment of 24/06/2004, C-49/02, Blau/Gelb, EU:C:2004:384, § 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.

A graphic representation consisting of two or more colours, designated in the abstract, without contours and arranged by associating the colours concerned in a predetermined and uniform way will satisfy the requirement of graphical representation (judgment of 14/06/2012, T-293/10, Colour per se, EU:T:2012:302, § 50).

Example of a sign that is acceptable:

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Sign Case number

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 8 298 499

2.1.2.6 Position mark

In order to satisfy the requirements of graphical representation and be clear, precise, intelligible, and objective, the mark’s representation must be filed with a description. This must indicate that the application is indeed for a position mark and detail its positioning.

The application could be objectionable for some of the goods if the positioning on those goods is unclear.

Examples of graphical representations of a trade mark filed as a position mark:

Sign Case Number

CTM 8 316 184 Initial description: ‘a copper ring between two metal layers, which is visible at the upper rim of the body of a cooking utensil like a pot or a pan’.

Final Description: The trade mark is a positional trade mark whereby a narrow copper ring is positioned visibly between two metal layers on the upper rim of the body of a pot or pan.

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The Office raised an objection on the basis of Article 7(1)(a) CTMR. The applicant had chosen to apply for an ‘other’ type of mark. The interpretation of the mark description in combination with the representation of the mark did not allow the Office to understand the scope of the right claimed, i.e. it was not clear what ‘a copper ring’ was or what ‘like a pot or pan’ meant. The applicant was requested to file a more precise and detailed mark description.

The description was modified by the applicant during the examination proceedings (see above) and the objection under Article 7(1)(a) CTMR was waived as a consequence of the new description.

2.1.2.7 3D representation of a space

Following the judgment of 10/07/2014, C-421/13, Apple, EU:C:2014:2070, it cannot be excluded that the requirements of graphic representation of the layout of a retail store are satisfied by a design alone, combining lines, curves and shapes, without any indication of the size or the proportions. The Court indicated that in such a case, the trade mark could be registered provided that the sign is capable of distinguishing the services of the applicant for registration from those of other undertakings and if no other grounds for refusal apply.

Sign Case number

10/07/2014, C-421/13, Apple, EU:C:2014:2070

2.1.3 Relationship with other CTMR provisions

Article 7(1)(a) CTMR reflects the Office’s obligation to refuse signs that do not conform to the requirements of Article 4 CTMR. If the sign does not meet these requirements, there is no acceptable graphical representation and the application will be examined in the light of the other absolute grounds for refusal.

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, distinctiveness of a trade mark 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 particular undertaking, and thus to distinguish that product from those of other undertakings (judgments of 29/04/2001, joined cases C-468/01 P to C-472/01 P, Tabs, EU:C:2004:259, § 32; 21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 42; and 08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 66; and 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 33).

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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 (judgments of 29/04/2001, joined cases C-468/01 P - C-472/01 P, Tabs, EU:C:2004:259, § 33; of 08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 67; and of 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 34) (judgments of 14/062012, T-293/10, Colour per se, EU:T:2012:302; and of 12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 23).

According to the case-law of the European courts, a word mark that 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 (judgment of 12/06/2007, T-190/05, TWIST & POUR, EU:T:2007:171, § 39).

In a similar vein, even though a given term might not be clearly descriptive with regard to the goods and services 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 therapeutic purpose of the goods or of their general reference to the medical field (judgment of 12/07/2012, T-470/09, Medi, EU:T:2012:369, § 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, EU:T:2013:220, § 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 of 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’ (judgments of 24/04/2012, T-328/11, EcoPerfect, EU:T:2012:197, § 25 and of 15/01/2013, T-625/11, ecoDoor, EU:T:2013:14, § 21);

 MEDI as referring to ‘medical’ (judgment of 12/07/2012, T-470/09, medi, EU:T:2012:369);

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 MULTI as referring to ‘much, many, more than one’ (decisions of 21/07/1999, R 0099/1999-1, MULTI 2 ‘n 1; 17/11/2005, R 0904/2004-2, MULTI);

 MINI as denoting ‘very small’ or ‘tiny’ (decision of 17/12/1999, R 0062/1999-2, MINIRISC);

 Premium/PREMIUM as referring to ‘best quality’ (judgments of 22/05/2012, T-60/11, Patrizia Rocha, EU:T:2013:162, § 46-49, 56 and 58; and of 17/01/2013, joined cases T-582/11 and T-583/11, PREMIUM XL/ PREMIUM L, EU:T:2013:24, § 26);

 PLUS, as denoting ‘additional, extra, of superior quality, excellent of its kind’. (decision of 15/12/1999, R 0329/1999-1, PLATINUM PLUS);

 ULTRA 1 as denoting ‘extremely’ (decision of 09/12/2002, R 333/2002-1, ULTRAFLEX);

 UNIVERSAL as referring to goods that fit for general or universal use (judgment of 02/05/2012, T-435/11, UniversalPHOLED, EU:T:2012:210, § 22 and 28).

Top level domain endings, such as ‘.com’, only indicate the place where information can be reached on the internet and thus cannot render a descriptive or otherwise objectionable mark registrable. Therefore, www.books.com is as objectionable for 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, EU:T:2012:614, § 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 online, 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, etc. cannot add to the distinctiveness of a sign.

Names of individual persons are distinctive, irrespective of the frequency of the name and even in the case of the most common surnames (such as Jones or García, judgment of 16/09/2004, C-404/02, Nichols, EU:C:2004:538, § 26 and 30) or in the case of prominent persons (including heads of states). However, an objection will be raised if the name can also be perceived as a non-distinctive term in relation to the goods and services (e.g. ‘Baker’ for pastry products).

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) CTMR in relation to goods and services that could have that story as their subject matter. The reason for this is that certain stories (or their titles) have

1 Amended on 23/06/2010.

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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 paint, clothing or pencils, for instance. However, they are incapable of performing a distinctive role in relation to books or films, for example, 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 matter, films, recordings, plays and shows (this is not an exhaustive list).

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 based on the assumption that the colour combination in the way it is filed appears on the goods or their packaging, or in advertisements 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 small number of trade mark registrations for certain services or goods could exhaust the entire range of colours available. Such an extensive monopoly would be incompatible with a system of undistorted competition, in particular because it could have the effect of creating an unjustified competitive advantage for a single trader. Nor would it be conducive 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, EU:C:2003:244).

As has been confirmed 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, EU:C:2003:244). A colour is not normally inherently capable of distinguishing the goods of a particular undertaking (para. 65).

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Therefore, single colours are not distinctive for any goods and services except under very special circumstances.

Such very special circumstances require the applicant to demonstrate 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 sector(s) 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, Orange II, EU:T:2010:396, § 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 for. The graphic representation should clearly indicate the proportion and position of the various colours, thus systematically arranging them by associating the colours in a predetermined and uniform way (judgments of 24/06/2004, C-49/02, Blau/Gelb, EU:C:2004:384, § 33 and of 14/06/2012, judgment of 06/05/2003, C-104/01, Libertel, EU:C:2003:244).

For example, a mark comprising a small yellow stripe on top of red is different from red and yellow presented in even proportions, with red on the left side. An abstract claim, in particular to two colours ‘in any possible combination’ or ‘in any proportion’, is not allowable and leads to an objection under Article 7(1)(a) CTMR (decision of 27/07/2004, R 0730/2001-4, ‘GELB/BLAU/ROT’, § 34). This must be distinguished from the indication of 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 must be accepted. If one of the two colours is either the commonplace colour for the product or the natural colour of the product, that is to say, a colour is added to the usual or natural colour of the product, an objection applies in the same way as if there were only one colour. Example: 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 is in fact to be judged as a case that 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 decorative 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).

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 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 demonstrate 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 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 by the General Court in its judgment of 12/11/2010, T-404/09, Grau/Rot, EU:T:2010:466). 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 of memorising a high number of different colours and their sequence.

For the names of colours see paragraph 2.3.2.9 below.

2.2.5 Single letters 2

2.2.5.1 General considerations

In its judgment of 09/09/2010, C-265/09 P (α), EU:C:2010:508, 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

2 This part deals with single letters under Article 7(1)(b) CTMR. For single letters under Article 7(1)(c)

CTMR, see paragraph 2.3.2.8 below.

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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 the part of the applicant.

Although acknowledging that it is legitimate to take into account the difficulties in establishing distinctiveness that may be associated with certain categories of trade marks because of their very nature, and that it may prove more difficult to establish distinctiveness for marks consisting of a single 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 that 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 motivated reasoning, why a trade mark consisting of a single 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 concerned. This need for 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 trade marks).

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 careful examination of whether a given letter can be considered inherently distinctive for 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 perceived as technical, model or catalogue references rather than as indicators of origin, although the fact 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, for a trade mark consisting of the single letter ‘C’ for ‘fruit juices’, as this letter is commonly used to designate vitamin C. The relevant public would not perceive it as a sign distinguishing the commercial origin of the goods in question.

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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, a 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 trade mark consisting of a single letter would lack distinctiveness, because when it comes to toy cubes and lotteries, consumers are more used to seeing single letters as having either a functional or a utilitarian connotation, rather than as indicators of commercial origin.

However, if it cannot be established that a given single letter is devoid of any distinctive character for 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 (decision of 30/09/2010, R 1008/2010-2, § 12-21).

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, EU:C:2012:460 and case-law cited).

Advertising slogans are objectionable under Article 7(1)(b) CTMR when the relevant public perceives them 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 when assessing the distinctive character of a slogan (judgments of 21/01/2010, C-398/08 P, VORSPRUNG DURCH TECHNIK, EU:C:2010:29, § 47, and of 13/04/2011, T-523/09, WIR MACHEN DAS BESONDERE EINFACH, EU:T:2011:175, § 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

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 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, metaphors, 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 snappier (inter alia, judgment of 24/01/2008, T-88/06, SAFETY 1ST, EU:T:2008:15, § 40). This means that a lack 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 sufficient 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.

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, EU:C:2012:460, § 48).

Moreover, according to well-established case-law from the General Court, the level of attention of the relevant public may be relatively low when it comes to promotional indications, whether what is involved are average end consumers or a more attentive public made up of specialists or circumspect consumers. This finding is applicable even for goods and/or services where the level of attention of the relevant public is generally high, such as financial and monetary services (judgments of 29/01/2015, T-609/13 SO WHAT DO I DO WITH MY MONEY, EU:T:2015:54, § 27 and T-59/14 INVESTING FOR A NEW WORLD, EU:T:2015:56, § 27 and quoted case-law).

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 that is a little out of the ordinary. It conveys the notion that the card has welcome features that are not obvious at first sight. The fact that the slogan leaves open what these features are, that is to say that the mark does not describe a specific service or characteristic of the ‘card’, does not make the mark distinctive.

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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 well-being 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 that 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.

CTM Main function Case No

DREAM IT, DO IT! Classes 35, 36, 41 and 45 Inspirational or motivational statement T-186/07

The relevant English-speaking public will see this as an invitation or encouragement to achieve their dreams and will understand the message that the services covered by that trade mark will allow them to do so.

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 of the services involved.

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CTM Main function Case No

INVESTING FOR A NEW WORLD Classes 35 and 36 Value statement

Judgment of 29/01/2015,

T-59/14

Objected to under Article 7(1)(b) CTMR

The sign INVESTING FOR A NEW WORLD, considered as a whole, may be easily understood by the relevant public, in view of the common English words of which it consists, as meaning that the services offered are intended for a new world’s needs. Given that the services covered by the mark applied for are all related to activities connected with finance and have a close link with the word ‘investing’, the Board of Appeal was right to find that the message conveyed by the expression ‘investing for a new world’ was that, when purchasing the services in question, the money or capital invested created an opportunity in a new world, which carried a positive connotation. The Court also found that the fact that the expression at issue could be interpreted in a number of ways did not alter its laudatory nature.

CTM Main function Case No

SO WHAT DO I DO WITH MY MONEY Classes 35 and 36 Value statement

Judgment of 29/01/2015,

T-609/13

Objected to under Article 7(1)(b) CTMR

The expression ‘so what do I do with my money’ prompts consumers to ask themselves what they should do with their financial resources and assets. In the present case, the average reasonably well-informed and reasonably observant and circumspect consumer of the services covered by the application for registration will, on reading or hearing that expression, ask himself/herself whether he/she is using his/her money effectively.

CTM Main function Case No

PIONEERING FOR YOU Classes 7, 9, 11, 37 and 42 Value statement

Judgment of 12/12/2014,

T-601/13 Objected to under Article 7(1)(b) CTMR

The sign would be understood as ‘innovative for you’. The meaning of the sign is clear and does not leave any doubts. The structure of the sign is grammatically correct and does not trigger any mental process in order to arrive at its meaning. It is, as a whole, a simple message that could be attributed to any producer or service provider with the natural consequence that it does not indicate the origin of the goods or services

Some examples of accepted slogans:

CTM Classes Case No

SITEINSIGHTS Classes 9 and 42 R 879/2011-2,CTM No 9 284 597

CTM Classes Case No

THE PHYSICIAN DRIVEN IMAGING SOLUTION Classes 9, 16 and 42 IR No 01 096 100

CTM Classes Case No

WET DUST CAN’T FLY Classes 3, 7 and 37 T-133/13 The concept of ‘wet dust’ is literally inaccurate, since dust is no longer dust when it is wet. Consequently, the juxtaposition of those two words gives that concept a fanciful and distinctive character.

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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 circle, a line, a rectangle or a pentagon is not capable, as such, of conveying a message that consumers can remember, with the result that they will not consider it as a trade mark (T-304/05, § 22).

Examples of refused trade marks

Sign G&S Reasoning Case

Class 33

The sign consists merely of a normal 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, EU:T:2007:271

Classes 9, 14,16, 18, 21, 24, 25, 28, 35-39,

41-45

The sign will be perceived as an excessively simple geometric shape, essentially as a parallelogram. To fulfil the identification function of a trade 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, EU:T:2011:176

Classes 14, 18, 25

The sign does not contain any elements that may be easily and instantly 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, Smiley, EU:T:2009:364

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 that is not capable of transmitting a trade mark message prima facie.

International registration

No 01 091 415

Classes 3, 18, 24, 43,

44

The sign consists of merely a simple geometric figure in green. The specific colour is commonly and widely used in advertising and in the marketing of goods and services for the power to attract without giving any precise message.

Judgment of 09/12/2010, T-282/09,

Carré convexe vert, EU:T:2010:508

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Example of an accepted trade mark

Sign G&S Reasoning Case

Classes 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:

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 a dot, comma, semicolon, quotation mark or exclamation mark will not be considered 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 €, £, $ signs; depending on the goods concerned, these signs will only inform consumers that a specific product or service is traded in that currency.

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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 that 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, !, EU:T:2009:374).

CTM No 5 332 184

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 per cent sign in a red 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 5 649 256

2.2.10 Pictograms

Pictograms are basic and unornamented signs and symbols that will be interpreted as having purely informational or instructional value in relation to the goods or services concerned. Examples would be signs that indicate mode of use (like a picture of a telephone in relation to pizza delivery services) or that convey a universally understandable message (like a knife and fork in relation to the 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 objectionable under Article 7(1)(d)) or the design of an ice 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.

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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, Main tenant une carte,

EU:T:2009:242

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 that 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’

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. Moreover, 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 4 373 403, 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

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Sign Reasoning Case

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 could not, in the minds of the relevant professional and general public, serve to distinguish the goods applied for as originating from a particular undertaking. Here, the colour yellow may be perceived as a decoration for 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 trade mark, but will perceive it in its alerting function or its decorative function.

Decision of 15/01/2013,

R 0444/2012-2, 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

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, Soap device, EU:T:2003:53, § 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 more difficult to come to a finding of distinctiveness, as such marks will not necessarily be perceived by the relevant public

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in the same way as a word or figurative mark (see judgment of 08/04/2002, C-136/02 P, Torches, EU:C:2004:592, § 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 that 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 that consist of the representation of the shape of the product itself is also relevant for figurative marks consisting of two- dimensional representations of the product or elements of it (see judgment of 14/09/2009, T-152/07, Uhr, EU:T:2009:324).

For a shape that 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 overcome through acquired distinctiveness. With regard to this first step, see paragraph 2.5 below.

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 that might give the trade mark a distinctive character. As a general principle, any element that on its own is distinctive will lend 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 a combination of these that appear on the exterior of the shape and remain clearly visible, such as labels on bottles. 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.

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Sign Case

R 1354/2007-1

The clearly legible words ‘BEN BRACKEN’ on the base of the bottle suffice on their own to impart distinctive character to the trade mark as a whole (para. 19).

However, non-distinctive elements or descriptive elements combined with a standard shape will not endow distinctiveness upon that shape (judgment of 18/01/2013, T-137/12, Vibrator, EU:T:2013:26, § 34-36).

Sign Case

T-323/11

An image depicting certain stones is embossed on the central part of the bottle.

The Court confirmed the BoA decision when it considered that the applicant had failed to prove that European consumers have sufficient information and knowledge to recognise that the embossing on the central part of the bottle at issue depicts the twelve-angle stones used in Inca constructions. Without that proof, European consumers will merely perceive the embossing as such without being aware of its significance, from which it follows that they will simply perceive it as a mere decoration without any distinctive character, because it is not particularly original or striking and, therefore, it will not serve to differentiate the bottle in question from the other bottles widely used in the packaging of beers (para. 25 and following).

Sign Case

T-137/12

The Court considered that the descriptive element ‘fun’ could not confer distinctiveness on the 3D sign. Moreover, BoA was right not to take into account the element ‘factory’ written above the word ‘fun’ as it

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Sign Case

was illegible in the application (para. 34 and following).

Sign Case

R 1511/2013-2 (T-390/14 appeal pending)

BoA confirmed that the figurative element ‘KANGOO JUMPS’ (in both the upper spring layer and the lower spring layer) and the letters ‘KJ’ and ‘XR’ (at the ends of the intermediate elastic plastic straps) could only be seen with great difficulty or were not visible at all. Therefore, parts that can only be noticed by detailed analysis, like the present ones, will, in general, not be perceived as an indication of origin (para. 29).

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. Frozen vegetables in the form of a crocodile are a good example for this.

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 (judgment of 19/09/2001, T-30/00, TABS-SQUARE/RED/WHITE, EU:T:2001:223) or a combination of basic shapes (see BoA decision of 13/04/2000, R 0263/1999-3).

 To be distinctive, the shape must depart significantly from the shape which is expected by the consumer, and it 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 (judgment of 08/04/2002, C-136/02 P, Torches, EU:C:2004:592, § 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 (judgments of 08/04/2002, C-136/02 P, Torches, EU:C:2004:592, § 32 and 07/02/2002, T-88/00, Torches, EU:T:2002:28, § 37).

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 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 representation of the same product (judgment of 19/09/2001, T-30/00, TABS- SQUARE/RED/WHITE, EU:T:2001:223, § 49).

Specific case: 3D toys, dolls and play figures

Applications for 3D marks in respect of toys, dolls and play figures in Class 28, or for figurative marks consisting of a faithful representation of such goods, must be assessed in the same way as other 3D marks.

To be distinctive, the shape must depart significantly from the shape that is expected by the consumer. In other words, it must depart significantly from the norm or customs of the sector so that it enables a consumer to identify the goods just by their shape.

This may be complicated by the sheer volume and proliferation of toy animals, figures, dolls and assorted characters in this market sector. Simply adding a basic set of clothing or basic human characteristics such as eyes or a mouth to a common plush toy such as a rabbit or a cat will generally not suffice. It is commonplace to present toy dolls and animals in clothing and to provide separately a range of clothing options, so that the user of such goods can change the appearance of the toy. It is also common to humanise the toys to make them more attractive. Within such a high-volume marketplace, the presentation of these goods in such a way will invariably leave the relevant consumer struggling, without prior exposure, to perceive a badge of origin in such marks.

The more basic the character, the more unusual the additional elements must be in order to create a whole that serves to ensure that the relevant public is able to distinguish the applicant’s goods from similar goods provided by other undertakings. The final conclusion must be based on the appearance of the sign as a whole.

Examples

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The following is a list of examples of shapes of goods applied for and an 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 basic shape and an 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, EU:T:2001:223, § 44 and 53). The same approach has been confirmed by several judgments, including the judgment of 04/10/2007, C-144/06 P, Tabs, EU:C:2001:577.

Judgment of 19/09/2001, T-30/00,

TABS - SQUARE/RED/WHITE

EU:T:2001:223

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, Torches, EU:C:2004:592

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 that 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,

Vibrator, EU:T:2013:26.

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,

Milchmäuse, EU:C:2012:537

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Sign Reasoning Case

This three-dimensional mark consisting of a handle, applied to 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, Teil des Handgriffes,

EU:T:2009:336

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 confectionery available on the market.

Judgment of 12/12/2013, T-156/12 Oval, EU:T:2013:642

The parrot figure applied for, on its own, does not depart from the usual form of parrot toys sufficiently to be seen as a trade mark. Its coat colour resembles the green colour quite common among parrots. Its head is bigger than normal and it is standing on its hind legs, but in the Board’s opinion, the majority of consumers would perceive the parrot shape as an ordinary parrot-shaped toy design, a rather banal toy, but not as an indication of origin (para. 16).

R 2131/2013-5

Accepted CTM No 10 512 218

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 materially different from a combination 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, the search must be carried out in relation to containers for beverages in general; see, in that regard, the opinion of the Advocate General of 14/07/2005 in C-173/04, Standbeutel, EU:C:2006:20).

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, Hase, EU:C:2012:307

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Sign Reasoning Case

The mark, the representation of a twisted 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 … a large 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, Bonbonverpackung,

EU:T:2004:330

The refusal of the shape applied for was confirmed by the General Court. The elongated 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, these alone are 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, Plastikflaschenform,

EU:T:2006:84

It is a well-known fact that bottles usually contain lines and creases on them. The relief at the top is not sufficiently striking but will be perceived as a mere decorative element. As a whole, 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, T- 347/10,

Getränkeflasche, EU:T:2013:201

‘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 that 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., that is to say, 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 noted that, although patterns may be represented in the form of square/rectangular labels, they should nonetheless be assessed as if they covered the entire surface of the goods applied for.

It must also be taken into account that when a pattern mark claims goods such as beverages or fluid substances in general, that is to say 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.

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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, Stoffmuster, EU:T:2012:436).

With regard to services, examiners should bear in mind that pattern marks will be used in practice on letterheads and correspondence, invoices, internet web sites, advertisements, shop signs, etc.

In principle, if a pattern 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, Glass pattern, EU:T:2002:245, § 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 analytical or comparative examination and without paying particular attention (judgments of 12/02/2004, C-218/01, Perwoll, EU:C:2004:88, § 53, and of 12/01/2006, C-173/04, Standbeutel, EU:C:2006:20, § 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 pattern 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 assessed with regard to goods. Nevertheless, a pattern mark that has been considered devoid of distinctive character for the goods it covers must also be regarded as lacking distinctiveness for services that are closely connected to those goods. For example, a stitching pattern that 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 pocket). The same considerations would apply to a fabric pattern with regard to services such as manufacture of fabrics.

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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 textile 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,

Stoffmuster, EU:T:2012:436, § 47

and 48

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,

Stoffmuster, EU:T:2012:436

CTM No 5 066 535 filed as a 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 specific 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 perceived by the relevant public either as a series of zigzag stitching or as a set 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

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Sign Reasoning Case

CTM No 9 589 219, filed as a figurative mark for goods

in Class 9

The sign, applied for in respect of ‘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 would 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

CTM No 6 900 898, for 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 such as to enable a consumer to perceive it as anything other than a mere decorative element.

Judgment of 28/09/2010, T-388/09,

DESIGN OF TWO CURVES CROSSED

AT ONE POINT INSERTED ON A

POCKET (FIG. MARK) EU:T:2010:410,

§ 19-27

CTM No 3 183 068, filed as a figurative mark, for 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 product’s inherent qualities being perceived simultaneously.

Judgment of 09/10/2002, T-36/01,

Glass pattern, EU:T:2002:245,

§ 26-28

CTM No 10 144 848, filed as a figurative mark for 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 that 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, that would distinguish it from the usual representation of another regular pattern consisting of a different number of squares. Neither the shape of each individual square nor the way they are combined are immediately noticeable features that could 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

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CTM No 370 445 Class 18

The chequerboard pattern is a basic and commonplace figurative pattern, since it is composed of a regular succession of squares of the same size that are differentiated by alternating different colours, in this case brown and beige. The pattern thus does not contain any notable variation from the conventional representation of chequerboards and is the same as the traditional form of such a pattern. Even applied to goods such as those falling within Class 18, the pattern in question does not differ from the norm or customs of the sector inasmuch as such goods are generally covered with fabrics of different kinds, and the chequerboard pattern, due to its great simplicity, might constitute precisely one of those patterns (para. 37).

T-359/12, Device of a chequered pattern (maroon & beige),

EU:T:2015:215 and T-360/12, Coty

Germany, EU:C:2014:1318

2.2.14 Position marks

Applications for position marks effectively seek to protect a sign that consists of elements (figurative, colour, etc.) positioned on a particular part of a product and in a particular proportion to the size of the product. The representation of the mark applied for must be accompanied by a description 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 that 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 the goods is likely to be understood as having a trade mark context.

Note that even where it is accepted that the relevant public may be attentive 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 position mark may appeal to the eye as an independent feature being distinguishable from the product itself and thus communicating a trade 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, Uhr, EU:T:2009:324

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Sign Reasoning Case

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,

Strumpf, EU:T:2010:235

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, Knopff im Stofftierohr, EU:T:2014:8

and T-434/12, Fähnchen im

Stofftierohr, EU:T:2014:6

2.2.15 Sound marks

The acceptability of a sound mark must, like words or other types of trade marks, depend upon whether the sound is distinctive per se, that is, whether the average consumer will perceive the sound as a memorable one that serves to indicate that the goods or services are exclusively associated with one undertaking.

Consumers are not in the habit of making assumptions about the origin of goods in the absence of any graphic or word element, because generally a sound per se is not commonly used in any field of commercial practice as a means of identification.

The perception of the relevant public is not necessarily the same in the case of a sign consisting of a sound per se as it is in the case of a word or figurative mark consisting of a sign that bears no relation to the appearance of the goods it denotes. While the public is accustomed to perceiving word or figurative marks instantly as signs identifying the commercial origin of the goods, the same is not necessarily true where the sign is merely a sound (by analogy, judgment of 04/10/2007, C-144/06 P, Tabs, § 36). By the same token, only a sound that departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) CTMR (by analogy, judgment of 24/05/2012, C-98/11 P, Hase, EU:C:2012:307, § 42).

The kinds of sound marks that are unlikely to be accepted without evidence of factual distinctiveness include:

a) very simple pieces of music consisting of only one or two notes (see examples below);

b) sounds that are in the common domain (e.g. La Marseillaise, Für Elise); c) sounds that are too long to be considered as an indication of origin; d) sounds typically linked to specific goods and services (see examples below).

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Where the sign applied for consists of a non-distinctive sound but includes other distinctive elements, such as words or lyrics, it will be considered as a whole.

Examples

Sign Description G&S Result Reasoning Case sequence of four different tones initially falling by a fourth and then rising and ending on the mediant

16, 35, 42

Distinctive jingle-like sound sequences, are capable of identifying goods and services.

R 2056/2013-4

The first two shorter A notes sound less powerful than the following long and higher C note. The higher and longer C note is thus accentuated on account of its pitch, length and strength.

9, 16, 35, 36, 41, 42

Distinctive According to general life experience, jingle-like sound sequences, enable distinction between goods and services.

R 0087/2014-5

Piece of music, three seconds long, combining different tones

9, 14, 16, 21, 25, 28, 35, 38, 41, 43

Distinctive CTM 11 074 705

Computer-generated sound of ten seconds

9, 28, 41 Distinctive CTM 11 654 209

Computer-generated sound of nearly 30 seconds including the sounds of animals followed by the sound of a motor

9, 12 Distinctive CTM 10 654 374

Two musical notes, F and C

35, 36, 38, 39, 41, 42

Not distinctive

A two note ‘tune’ has no impact on the consumer and will only be perceived by the consumer as a very banal sound, such as the ‘ding-dong’ of a doorbell.

CTMA 4 010 336

Two extremely short blips 9, 38 Not distinctive Machine generated blip that is commonly emitted by computers and other electronic devices

CTMA 9 199 167

‘Ping’ sound, resembling a warning signal

9, 16, 28 Not distinctive Sound constitutes a warning signal and a direct characteristic of the goods applied for

R 2444/2013-1

Absolute Grounds for Refusal

Guidelines for Examination in the Office, Part B, Examination. Page 49

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Machine-generated synthesised sound

9, 12, 35 Not distinctive Sound typically linked to the goods and services applied for

R 1338/2014-4

The first 13 notes of ‘La Marseillaise’

Any Not distinctive A national anthem is in the public domain

Invented example

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 meaning 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 services must be sufficiently direct and specific (judgments of 20/07/2004, T-311/02, Limo, EU:T:2004:245, § 30; 30/11/2004, T-173/03, Nurseryroom, EU:T:2004:347, § 20), as well as concrete, direct and understood without further reflection (judgment of 26/10/2000, T-345/99, Trustedlink, EU:T:2000:246, § 35). If a mark is descriptive, it is also non-distinctive.

Article 7(1)(c) CTMR does not apply to those terms that 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 31/01/2001, T-135/99, Cine Action, EU:T:2001:30, § 29).

The public interest underlying Article 7(1)(c) CTMR is that exclusive rights should not exist for purely descriptive terms that other traders might wish to use as well. However, it is not necessary for the Office 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 plain 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 Office 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 services are to be considered descriptive. In these cases it is not required to demonstrate that the meaning of the term is immediately apparent to the relevant consumers to which the goods and services are addressed. It

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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 characteristic of the goods and services (judgment of 17/09/2008, T-226/07, Pranahaus, EU:T:2008:381, § 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 (judgment of 13/09/2012, T-72/11, Espetec, EU:T:2012:424, § 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 descriptive term for cheese (judgment of13/06/2012, T-534/10, Hellim, EU:T:2012:292).

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 descriptive 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) CTMR also applies to transliterations. In particular, transliterations into Latin characters of Greek words must be treated 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, EU:T:2010:537, § 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.

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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, T-357/99 and T-358/99, Universaltelefonbuch, EU:T:2001:162) or constituent parts or components of the goods (judgment of 15/01/2013, T-625/11, EcoDoor, EU:T:2013:14, § 26).

Quality

This includes both laudatory terms, referring to a superior 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; ‘2000’, which refers to the size of the motor or ‘75’, which 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.

Intended purpose

The intended purpose is the function of a product 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, EU:T:2000:246). Marks that have been refused registration on this basis include ‘Therapy’ for massage tools (decision of 08/09/1999, R 0144/99-3, 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, EU:T:2013:226). 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, EU:T:2005:211 (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.

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Geographical origin

See paragraph 2.3.2.6 below.

Time of production of the goods or of rendering of the service

This covers expressions concerning the time at 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 services must lead to a refusal 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 (judgments of 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 102; 24/04/2012, T-328/11, EcoPerfect, EU:T:2012:197, § 41).

Examples of ‘other characteristics’

 the subject matter contained within the claimed goods or services: (see paragraph 2.3.2.7 below

 the identification of the targeted consumer: ‘children’ or ‘ellos’ (judgment of 27/02/2002, T-219/00, Ellos, EU:T:2002:44) for clothing.

2.3.2 Word marks

2.3.2.1 One word

Descriptive terms are those that 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 word is descriptive if either for the general public (if the goods or services target them) or for a specialised public (irrespective of whether the goods or services also target 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, EU:C:2013:23)

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 ‘CONTINENTAL’ is descriptive for ‘live animals, i.e., dogs’ and ‘the keeping and breeding of dogs, i.e. puppies and animals for breeding’. Indeed, the word ‘Continental’ indicates a breed of bulldogs (judgment of 17/04/2013, T-383/10, Continental, EU:T:2013:193).

Furthermore, as seen above, objections should also be raised against terms that describe desirable characteristics of the goods and services.

However, it is important to distinguish laudatory terms that describe — although in general terms — desirable characteristics of goods and services as being cheap, convenient, of high quality, etc. and which are excluded from registration, from those terms that are laudatory in a broader sense, that is to say, 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, Bravo, EU:C:2001:510).

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 that is sufficiently far 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, EU:C:2004:87, § 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, Biomild, EU:C:2004:87);

‘Companyline’ for insurance and financial affairs (judgment of 19/09/2002, C-104/00 P, Companyline, EU:C:2002:506);

‘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, Trustedlink, EU:T:2000:246);

‘Cine Comedy’ for the broadcast of radio and television programmes, production, showing and rental of films, and allocation, transfer, rental and other exploitation

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of rights to films (judgment of 31/01/2001, T-136/99, Cine Comedy, EU:T:2001:31);

‘Teleaid’ for electronic devices for transferring speech and data, repair services for automobiles and vehicle repair, operation of a communications network, towing and rescue services and computing services for determining vehicle location (judgment of 20/03/2002, T-355/00, Tele Aid, EU:T:2002:79);

‘Quickgripp’ for hand tools, clamps and parts for tools and clamps (order of 27/05/2004, T-61/03, Quick-Grip, EU:T:2004:161);

‘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, Twist & Pour, EU:T:2007:171);

‘CLEARWIFI’ for telecommunications services, namely high-speed access to computer and communication networks (judgment of 19/11/2009, T-399/08, Clearwifi, EU:T:2009:458);

‘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, Steam Glide, EU:T:2013:20);

 ‘GREENWORLD’ for, inter alia, gas fuels, fuels, electric power, gas for lighting, retail services in the areas of fuels, transmission and transport of electrical energy, heat, gas or water (judgment of 27/02/2015, T-106/04, Greenworld, EU:T:2015:123);

 ‘ecoDOOR’ for products on which doors have a significant impact, such as dishwashers, washing machines, vending machines, apparatus for cooking (judgment of 10/07/2014, C-126/13 P, EcoDoor, EU:C:2014:2065).

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, EU:T:2001:151.

The following examples have been accepted for registration:

 GREENSEA for goods and services in Classes 1, 3, 5 and 42;  MADRIDEXPORTA for Classes 16, 35, 36, 38, 39, 41 and 42 (judgment of

16/09/2009, T-180/07, Madridexporta, EU:T:2009:334);  DELI FRIENDS for Classes 29, 30 and 35.

Combinations not following grammatical rules

A combination of words can be considered a descriptive indication even though it does not follow the usual grammatical rules. If, however, the combination does amount to more than the mere sum of its parts, it may be acceptable (judgment of 17/10/2007, T-105/06, WinDVD Creator, EU:T:2007:309, § 34).

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 ‘HIPERDRIVE’ is considered descriptive of the intended purpose of setting devices for tools, despite the misspelling of the adjective ‘hyper’ as ‘hiper’ (judgment of 22/05/2014, T-95/13, Hiperdrive, EU:T:2014:270, § 33-42).

‘CARBON GREEN’ is descriptive for reclaimed rubber, namely, recycled carbonaceous materials, namely plastic, elastomeric, or rubber filled materials obtained from pyrolysed tire char and plastic, elastomeric, or rubber compounds formulated using such filler material, even though adjectives precede nouns in English (judgment of 11/04/2013, T-294/10, Carbon green, EU:T:2013:165).

Furthermore, 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 these grammatical elements will sometimes not be sufficient to make the mark distinctive.

Combinations of adjectives + nouns or verbs

For combinations consisting of nouns and adjectives, 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 0033/2000-3) 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. Therefore, the word ‘ULTRAPROTECT’ must be considered descriptive for sterilising and sanitary preparations, even though it consists of the combination (grammatically incorrect) of an adjective (ULTRA) with a verb (PROTECT), since its meaning remains clearly understandable (decision of 03/06/2013, R 1595/2012-1; see also judgment of 06/03/2012, T-565/10, Highprotect, EU:T:2012:107).

Combinations of words in different languages

Combinations made up of words from different languages may still be objectionable if the relevant consumers will understand the descriptive meaning of all the elements without further effort. This may be the case, in particular, when the sign contains basic terms in a language that will be understood easily by the speakers of another language, or if the terms are similar in both languages. For instance, if a mark is composed of one basic descriptive term belonging to language ‘A’ and another descriptive word in language ‘B’, the sign as a whole will remain descriptive when it is assumed that the speakers of language ‘B’ will be able to grasp the meaning of the first term.

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Applications that consist of descriptive words or expressions repeated in various languages are a special case in the sense that they are mere translations of each other. These trade marks should be considered descriptive if the relevant consumer will grasp that each of the words or expressions is in fact merely the translation of a descriptive meaning, for example, because the proximity of the terms contained in the mark to each other will lead the consumer to understand that they all have the same descriptive meaning in different languages. For instance:

 CTM No 3 141 017 ‘Le salon virtuel de l’industrie — Industry virtual exhibition — Die virtuelle Industriemesse — Il salon virtuale dell'industria — El salon virtual de la industria’ for services in Classes 35, 38 and 42.

The following examples have been refused registration.

 CTM No 12 596 169 ‘BABYPATAUGEOIRE’ for Classes 20 and 42 related to chairs and design of chairs for babies. The sign is composed of an EN and a FR term that will be immediately understood by the French-speaking part of the public (the term ‘baby’ will be understood by the French-speaking part of the public).

 ‘EURO AUTOMATIC PAIEMENT’, for Classes 9 and 36 (judgment of 05/09/2012, T-497/11, Euro automatic paiement, EU:T:2012:402, combination of English and French terms).

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 misspelt due to influences of another language or the spelling of a word in non-EU areas, such as American English, in slang or to make the word more fashionable. Examples of signs that have been refused:

‘Xtra’ (decision of 27/05/1998, R 0020/1997-1), ‘Xpert’ (decision of 27/07/1999, R 0230/1998-3), ‘Easi-Cash’ (decision of 20/11/1998, R 0096/1998-1), ‘Lite’ (judgment of 27/02/2002, T-79/00, Lite, EU:T:2002:42), ‘Rely-able’ (judgment of (30/04/2013, T-640/11, Rely-able, EU:T:2013:225),  ‘FRESHHH’ (judgment of 26/11/2008, T-147/06, Freshhh, EU:T:2008:528).

Furthermore, consumers will, without further mental steps, understand the ‘@’ as the letter ‘a’ or the word ‘at’ and the ‘€’ as the letter ‘e’. Consumers will replace specific numerals by words, for example, ‘2’ as ‘to’ or ‘4’ as ‘for’.

However, if the misspelling is fanciful and/or striking or changes the meaning of the word (accepted:‘D’LICIOUS’, CTM No 13 729 348 (instead of ‘delicious’), ‘FANTASTICK’, CTM No 13 820 378 (instead of ‘fantastic’)), 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,

 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 direct link with the term that they supposedly refer to.

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The following marks were refused:

Sign Reasoning Case

ACTIVMOTION SENSOR

CTM No 10 282 614 for 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 0716/2012-4 – ‘ACTIVMOTION SENSOR’, § 11

XTRAORDINARIO

International registration designating the EU

No 930 778, for goods in Class 33 (tequila)

The above term is a non-existent word but closely resembles the Spanish adjective ‘extraordinario’. Spanish and Portuguese consumers will perceive the sign as a misspelling of a word 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’, § 11-12

However, 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 common 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 0009/2001-1 – ‘LINQ’, § 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’. Furthermore, 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 pronounced differently from the word ‘liquid’.

Decision of 22/02/2008,

R 1769/2007-2 – ‘LIQID’, § 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 sufficient (judgment of 13/06/2014, T-352/12, Flexi, EU:T:2014:519).

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, SnTEM, SnPUR & SnMIX, EU:T:2005:3),

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 TDI (judgment of 03/12/2003, T-16/02, TDI, EU:T:2003:327 (appeal C-82/04 P was settled),

 LIMO (judgment of 20/07/2004, T-311/02, Limo, EU:T:2004:245),  BioID (judgment of 05/12/2002, T-91/01, BioID, EU:T:2002:300 (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 that precedes or follows a descriptive word combination should be objected to as descriptive if it is perceived by the relevant public as merely a word combined with an abbreviation 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 30/06/2009, T-285/08, Natur-Aktien-Index, EU:T:2009:230, § 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 abbreviation of that word will be considered descriptive as a whole. This will be the case where the relevant public will not immediately perceive the acronym as an abbreviation of the descriptive word combination, but rather as a distinctive element that 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, EU:T:2007:330, § 21). It is inappropriate to apply criteria to slogans that 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, EU:C:2012:460, § 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

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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 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 are, therefore, tough and resistant to wear and tear (judgment of 16/09/2009, T-80/07, Built to resist, EU:T:2009:332, § 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, EU:T:2003:267, § 39). For example, ‘German’ will still be perceived as referring to Germany, and ‘French’ will still be perceived 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.

It is in the public interest that signs that may serve to designate the geographical origin of goods or services remain available, not least because they may be an indication of the quality and other characteristics of the categories of goods concerned, and may also, in various ways, influence consumer preferences by, for instance, associating the goods or services with a place that may elicit a favourable response (judgments of 15/01/2015, T-197/13, MONACO, EU:T:2015:16, § 47; 25/10/2005, T-379/03, Cloppenburg, EU:T:2005:373, § 33).

This paragraph (2.3.2.6.) 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 Article 7(1)(j) and (k) CTMR.

If the sign contains other non-descriptive or distinctive elements, the registrability of the combination (of the sign in its entirety) must be assessed in the same manner as in cases where descriptive elements are coupled with distinctive or non-descriptive elements (see paragraph 2.3.4 below).

Assessment of geographical terms

The registration of geographical names as trade marks is not possible where such a geographical name is either already famous, or is known for the category of goods concerned, and is therefore associated with those goods or services in the mind of the relevant class of persons, or is liable to be used by undertakings and must remain available to such undertakings as indications of the geographical origin of the goods

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and services concerned (judgments of 15/01/2015, T-197/13, MONACO, EU:T:2015:16, § 48; 25/10/2005, T-379/03, Cloppenburg, EU:T:2005:373, § 34).

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 made 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); or  the place that influences consumer preferences (e.g. lifestyle) by eliciting a

favourable response (15/01/2015, T-197/13, MONACO, EU:T:2015:16, § 47 and Cloppenburg, EU:T:2005:373, § 33.

a) First step: term understood by the relevant public

The first step in assessing a geographical term is to determine whether it is understood as such by the relevant public. Article 7(1)(c) CTMR does not in principle preclude the registration of geographical names that are unknown to the relevant public — or at least unknown as the designation of a geographical location (15/01/2015, T-197/13, MONACO, EU:T:2015:16, § 49; T-379/03, Cloppenburg, EU:T:2005:373, § 36). Whether or not this is the case will be determined by taking as a basis a reasonably well-informed consumer who has sufficient common knowledge but is not a specialist in geography. For an objection to be raised, the Office must prove that the geographical term is known by the relevant public as designating a place (15/01/2015, T-197/13, MONACO, EU:T:2015:16, § 51).

b) Second step: term designates a place associated with the goods and services

The second step is to determine whether the geographical term applied for designates a place that is currently associated with the claimed goods or services in the mind of the relevant public or whether it is reasonable to assume that such a name may, in the mind of the relevant public, designate the geographical origin of that category of goods or services (15/01/2015, T-197/13, MONACO, EU:T:2015:16, § 51, T-379/03, Cloppenburg, EU:T:2005:373, § 38), or if it will reasonably be associated with those goods or services in the future (judgment of 04/05/1999, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 31).

In establishing whether such an association exists, the Court has clarified that the following factors should be taken into account (judgment of 04/05/1999, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 32 and 37, T-379/03, EU:T:2005:373, § 38 in fine):

 the degree of familiarity of the relevant public with the geographical term the characteristics of the place designated by the term, and  the category of goods or services.

It is not necessary to establish that the name actually designates the true geographical origin of the goods. It is enough to demonstrate that the connection between the name of the place and the goods may enable the relevant public to perceive the contested

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sign as an indication of the origin of those goods (judgment of 15/10/2003, T-295/01, Oldenburger, EU:T:2003:267, § 43). For example, ‘Milano’ should be refused for clothing, Switzerland for financial services and Islas Canarias for tourist services.

With regard to reasonable future association, an Article 7(1)(c) CTMR refusal cannot be based solely 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, T-226/08, Alaska, EU:T:2009:257). The abovementioned factors should be assessed (degree of familiarity of the relevant public with the geographical term, the characteristics of the place designated by the term, and the category of goods or services). 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.

Sign Reasoning Case

BRASIL The Board recognised that the mere existence of whisky production in Brazil was not sufficient in itself to presume that relevant consumers of whisky will associate the sign with the goods. However, it had to be assessed whether it was reasonable to assume that such an association might be established in the future. The BoA assessed a number of factors, including the fact that it is current practice in trade to indicate the geographical origin of whiskies and whisky-based beverages. It concluded that the designation ‘Brasil’ would be understood as an informative indication for whisky and whisky-based beverages (para. 29).

R 0434/2013-1 Class 32: Beers; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages. Class 33: Whisky; whisky- based beverages.

Sign Reasoning Case

THE SPIRIT OF CUBA The GC considered that the sign would be understood by the relevant public as a reference to the alcoholic spirit of Cuba or to an alcoholic beverage from Cuba, despite the structure of the sign (‘the’, singular form, ‘of’ instead of ‘from’) (para. 26)

T-207/13 Class 33: Alcoholic

beverages.

Sign Reasoning Case

PORT LOUIS

The GC annulled a BoA decision because it had not established that the city of Port Louis (capital of the Republic of Mauritius) was sufficiently known by the relevant public of the former colonial powers of France and the United Kingdom. Nor was it established that Port Louis had a reputation for the relevant goods (textile manufacture) amongst the relevant public (paras 40-54)

T-230/06, ‘Port Louis’

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Sign Reasoning Case

Class 18: Leather and imitations of leather, goods made of these materials and not included in other classes; animal skins, hides; trunks and traveling bags; umbrellas, parasols, canes and walking sticks; saddlery, harness and whips; horse blankets Class 24: Household textiles; bed and table covers; bedclothes; bath linen (except clothing); household linens; shower curtains of textile; curtains of textile or plastic; blinds of textile; coverlets; wax table cloths Class 25: Clothing, footwear, headgear.

Geographical terms that are merely allusive or fanciful should not be objected to on this basis. For example, while the North Pole and Mont Blanc are commonly known geographical terms, they would not be understood in the context of ice cream or sports cars as possible places of production, but as merely allusive and fanciful terms. The same applies to the fashionable use of city/country names for goods and services unrelated to what the city/country is known for (e.g. ‘Hollywood’ for chewing gum, ‘Greenland’ for fresh fruits and vegetables (R 0691/2000-1, GREENLAND), ‘Sudan’ for paints (R 0594/1999-2, SUDAN), and ‘Denver’ for lighting equipment (R 2607/2011-2, DENVER)) and the use of names of fashionable suburbs or shopping streets (‘Champs Élysées’ for bottled water, ‘Manhattan’ for tomatoes). The same applies by analogy to ‘Port Louis’ for textiles.

Finally, there are some geographical terms, such as major geographical places or regions as well as countries, which may be refused merely because of their widespread recognition and fame for the high quality of their goods or services. In such cases no detailed assessment of the association between the place and the goods and services is necessary (judgment of 15/12/2011, T-377/09, Passionately Swiss, EU:T:2011:753, § 43-45).

Sign Reasoning Case

Passionately Swiss

The GC held that BoA did not need to go into a detailed assessment of the association between the sign and each of the goods and services. It based its finding on Switzerland’s reputation for quality, exclusiveness and comfort, which can be associated with the services in Classes 35, 41, 43 and 44 and the goods in Class 16 (para. 45).

T-377/09

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Sign Reasoning Case

MONACO

The General Court found that the word ‘monaco’ corresponds to the name of a globally known principality, not least due to the renown of its royal family and its organisation of a Formula 1 Grand Prix and a circus festival. The Court considered that the trade mark MONACO had to be refused for goods and services in Classes 9, 16, 39, 41 and 43 as the word ‘monaco’ could be used, in trade, to designate origin, geographical destination or the place of supply of services. The trade mark was thus descriptive for the goods and services concerned.

T-197/13

The mere fact that a geographical term is used by only one producer 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 sign 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. Commonly known terms likely to be linked to a particular 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, EU:T:2007:172, § 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 that will be undoubtedly perceived by the relevant public 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 objection 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 regard to this section, the terms ‘subject matter’ and ‘content’ are used interchangeably. See also paragraph 2.2.3 above.

Names of famous persons (in particular musicians or composers) can indicate the category of goods, if due to 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) that contain subject matter regarding other things, products and/or activities (e.g. a book about history, or an educational course on history),

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 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 that may contain subject matter

For most cases, the goods or services that may consist of or contain objectionable subject matter are the following:

 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, EU:T:2000:283, § 42-44)

— LIVE CONCERT for advertising services — CLOTHING for retail services.

 Class 38: Telecommunications

○ Objectionable

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— 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.

The above list of Nice classes is not exhaustive, although it will apply to the vast majority of cases. Consequently, objections based on descriptive 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 that excludes that particular characteristic described by the sign applied for will not avoid an objection 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 particular characteristic (judgment of 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 114-116). The following invented examples illustrate designations of goods or services that 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 ancient Roman

themes  TECHNOLOGY for classes about creative fiction writing.

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2.3.2.8 Single letters and numerals

Single letters 3

General considerations

In its judgment of 09/09/2010, C-265/09 P (‘α’), 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 motivated reasoning, why a trade mark consisting of a single 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 the basis of a factual assessment, why the trade mark applied for 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.

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, EU:T:2008:161, § 24-31 and decision of 08/09/2006, R 0394/2006-1, § 22-26).

An objection might be justified 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’.

However, 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 to objection under another provision of Article 7(1) CTMR, then the application should be accepted.

3 This part deals with single letters under Article 7(1)(c) CTMR. For single letters under Article 7(1)(b)

CTMR, see paragraph 2.2.5.

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See paragraph 2.2.5.2 above for further examples of where an objection under Article 7(1)(b) CTMR may be raised.

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 trade marks (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 trade marks 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 services 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 directly and specifically to these goods, as it contains obvious and direct information regarding their size. The Board also confirmed the refusal of this sign in respect of ‘beers’ in Class 32, as practical experience of the marketing of the relevant goods — relied upon by the Office — 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 0072/2009-2 ‘15’, § 15-22).

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; 2020 would be objectionable also for ‘events’ as it could be considered the year of an event.

 size: 1600 for cars, 185/65 for tyres, 10 for women’s clothing in the UK, 32 for women’s clothing in France,

 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,

 alcoholic content: 4.5 for lager, 13 for wines,

 the number of pieces: 1 000 for puzzles.

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However, where the numeral does not appear to have any possible meaning in respect of the goods and services, it is acceptable, that is to say, ‘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 describes 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 seen 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;

 Words such as SAPPHIRE, FLAMINGO or LAPISLAZULI do not have a sufficiently strong colour connotation to overwhelm the other non-colour meaning, and thus should generally not be objected to if they are not likely to be perceived as having a colour meaning with respect to the claimed goods or services (decision of 12/12/2013, 7950 C).

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 that are descriptive but obscure and unlikely to be used by others can be accepted: LUNA (alchemists’ name for silver) and CARNELIAN (an alternative name for CORNELIAN, a red gem stone that 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 to be used in trade but which are not simultaneously registered by the Community Plant Variety Office in accordance with Council Regulation (EC) No 2100/94 of 27/07/1994. How to deal with CTMs applied for that contain or consist of a registered plant variety name is explained in another section of the Guidelines, in the context of Article 7(1)(f) CTMR (see paragraph 2.6.1.2 below).

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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 CTM application consists of wordings for live plants, agricultural seeds, fresh fruits, fresh vegetables or equivalent ones, the Office will have to verify, by means of a search on the internet, whether the term making up the trade mark applied for coincides with the name of a specific plant variety that 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 Office 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 demonstrates that the term in question has been used to such an extent as to have become customary in trade in the EU, then an objection both under Article 7(1)(c) and (d) CTMR would be appropriate (see also paragraph 2.4.4 below).

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 that 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 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 become 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 raised when the applied for trade mark is only a slight variation (i.e. minor differences that 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 that 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.

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Lastly, it should be noted that an objection should be raised not only in respect of applied for trade marks that are identical to (or are slight variations of) a plant variety name that is already used in trade, but also in respect of any good and/or service that 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 magazines, consumers are accustomed to recognising descriptive combinations of terms as badges of origin. This is 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/national banks names) or

 the combination being likely to identify a specific entity (see, for example, ‘DIARIO DE LAS PROVINCIAS DE VALENCIA’, ‘BANCO AZTECA’ or ‘BANCO GALLEGO)

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 island, a city, a country etc.). 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 perceived as an expression merely indicating any hotel located in the island of Bali, which is clearly objectionable. Consequently, each case should be assessed 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.

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2.3.2.13 Combinations of names of countries/cities with a number indicating a year

Marks consisting of the combination of the name of a country/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 example, the mark ‘GERMANY 2006’ has been considered as a descriptive indication for a wide list of goods and services, 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 thereby 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 co- 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).

2.3.2.14 INN codes

International Nonproprietary Names (INN) are assigned to pharmaceutical substances by the World Health Organisation (WHO), so that each substance can be recognised by a unique name. These names are needed for the clear identification, safe prescription and dispensing of medicines, and for communication and exchange of information among health professionals. INNs can be used freely because they are in the public domain. Examples of INNs are alfacalcido, calcifediol, calcipotriol.

Stems define the pharmacologically related group to which the INN belongs. INN stems serve to indicate the mode of action of groups of drugs. These stems and their definitions have been selected by WHO experts and are used when selecting new international non-proprietary names. An example of a stem is ‘calci’.

The criteria for assessing the descriptiveness of a trade mark for pharmaceuticals are no different from those applicable to other categories of trade marks. The provisions of trade mark law apply to pharmaceuticals in the same way as to other categories of goods. The European Medicines Agency (EMA) assesses the single name under which a medicinal product will be marketed as part of its marketing authorisation for the European Union. EMA’s assessment is based on public health concerns and takes into account the WHO World Health Assembly resolution (WHA46.19) on protection of

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INNs/INN stems to prevent any potential risk of confusion. The Office’s assessment of the registrability of pharmaceutical trade marks, however, has no specific legal basis for taking such health-related concerns into consideration (by analogy, judgment of 05/04/2006, T 202/04, Echinaid, EU:T:2006:106, § 31-32).

Considering the descriptive nature of INN codes and stems, an objection should be raised for Class 5 in the following scenarios:

 where the CTM is an INN (the general rules on misspellings also apply, see paragraph 2.3.2.3 above); or

 where an INN appears within a CTM and the other elements of the CTM are descriptive/non-distinctive too (for instance BIO, PHARMA, CARDIO, MED, DERMA); or

 where the CTM consists only of a stem.

A list of INN codes can be accessed after online registration on MedNet (https://mednet-communities.net). A list of common stems is available at the following link: http://www.who.int/medicines/services/inn/StemBook_2011_Final.pdf.

Office practice is to accept figurative trade marks containing INN codes or stems, applying the same criteria as to any other figurative trade mark containing descriptive word elements (i.e. whether the stylisation and/or the graphical features of a sign are sufficient for it to act as a trade mark).

An objection may also be based on Article 7(1)(g) CTMR in the unlikely scenario that the list of goods in Class 5 refers to a different kind of drug from that covered by the INN. Where the list in Class 5 includes pharmaceuticals, the Office assumes good faith and no objection under Article 7(1)(g) CTMR will be raised.

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 will not be taken into consideration for the purpose of the application of Article 7(1)(c).

Where a figurative mark consists exclusively of a basic natural form that is not significantly different from a true-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’

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Sign Case

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 that 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 sufficiently 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, was registered.

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 threshold

2.3.4.1 Preliminary remarks

Terms or signs that 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 that 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 non-distinctive,

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descriptive or generic element combined with other elements that take the sign as a whole beyond a minimum level of distinctiveness.

In practice this means that one of the main questions that the Office must answer is whether the mark is figurative enough to reach the minimum degree of distinctive character that is required for registration.

Finally, the fact that a sign contains figurative elements does not prevent it from still being misleading or contrary to public order or accepted principles of morality or from falling under other grounds of refusal, such as those set forth by Article 7(1)(h), (i), (j) and (k) CTMR.

Sign CTM No Goods and services

CTM No 8 384 653 Classes 33, 35 and 39

(09/03/2012, T-417/10, ¡Que buenu ye! Hijoputa, EU:T:2012:120)

The application was rejected since ‘Hijoputa’ is an offensive and vulgar word in Spanish. The application was considered to be against accepted principles of morality (irrespectively of the figurative elements of the sign) protected under Article 7(1)(f) CTMR.

Sign CTM No Goods and services

CTM No 11 402 781 Class 33

The application was refused on the basis of Article 7(1)(j) CTMR, because it contains the protected geographical indication for wines ‘MOLINA’ (protected under the agreement establishing an association between the European Community and its Member States, of the one part, and the Republic of Chile, of the other part). The distinctive figurative elements of the sign are irrelevant.

2.3.4.2 Assessment of the figurative threshold

The presence of figurative elements may give distinctive character to a sign consisting of a descriptive and/or non-distinctive word element so as to render it eligible for registration as a CTM. Therefore, the question to be considered is whether the stylisation and/or the graphical features of a sign are sufficiently distinctive for the sign to act as a badge of origin.

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The examples below are taken from CP3 (Convergence Programme 3), where The IP offices of the European Trade Mark and Design Network agreed on a Common Practice in relation to when a figurative mark, containing purely descriptive/non- distinctive words, should pass the absolute grounds examination because the figurative element renders sufficient distinctive character.

The signs containing ‘Flavour and aroma’ seek protection for coffee in Class 30, the signs containing ‘Fresh sardine’ and ‘Sardines’ seek protection for sardines in Class 29, the sign containing ‘DIY’ seeks protection for kits of parts for assembly into furniture in Class 20 the signs containing ‘Pest control services’ seek protection for pest control services in Class 37, and the sign containing ‘Legal advice services’ seeks protection for legal services in Class 45.

Stylised word elements

 Typeface and font

In general, descriptive/non-distinctive word elements appearing in basic/standard typeface, lettering or handwritten style typefaces — with or without font effects (bold, italics) — are not registrable.

Non-distinctive examples:

Where standard typefaces incorporate elements of graphic design as part of the lettering, those elements need to have sufficient impact on the mark as a whole to render it distinctive. When these elements are sufficient to distract the attention of the consumer from the descriptive meaning of the word element or likely to create a lasting impression of the mark, the mark is registrable.

Distinctive examples:

 Combination with colour

The mere ‘addition’ of a single colour to a descriptive/non-distinctive word element, either to the letters themselves or as a background, will not be sufficient to give the mark distinctive character.

Use of colours is common in trade and would not be seen as a badge of origin. However, it cannot be excluded that a particular arrangement of colours, which is unusual and can be easily remembered by the relevant consumer, could render a mark distinctive.

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Non-distinctive examples:

 Combination with punctuation marks and other symbols

In general, the addition of punctuation marks or other symbols commonly used in trade does not add distinctive character to a sign consisting of descriptive/non-distinctive word elements.

Non-distinctive examples:

 Position of the word elements (sideways, upside-down, etc.)

In general, the fact that the word elements are arranged in vertical, upside-down or in one or more lines is not sufficient to endow the sign with the minimum degree of distinctive character that is necessary for registration.

Non-distinctive examples:

However the way in which the word elements are positioned can add distinctive character to a sign when the arrangement is of such a nature that the average consumer focuses on it rather than immediately perceiving the descriptive message.

Distinctive examples:

Word element(s) and additional figurative element(s)

 Use of simple geometric shapes

Descriptive or non-distinctive verbal elements combined with simple geometric shapes such as points, lines, line segments, circles, triangles, squares, rectangles, parallelograms, pentagons, hexagons, trapezia and ellipses are unlikely to be acceptable, in particular when the abovementioned shapes are used as a frame or border.

Non-distinctive examples:

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However, geometric shapes can add distinctiveness to a sign when their presentation, configuration or combination with other elements creates a global impression that is sufficiently distinctive.

Distinctive examples:

 Position and proportion (size) of the figurative element in relation to the word element

In general, 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 said figurative element is, due to its size and position, clearly recognisable in the sign.

Non-distinctive examples:

Distinctive example:

 the figurative element is a representation of, or has a direct link with, the goods and/or services

A figurative element is considered to be descriptive and/or devoid of distinctive character whenever:

— It is a true-to-life portrayal of the goods and services. — It consists of a symbolic/stylised portrayal of the goods and services that does not

depart significantly from the common representation of said goods and services.

Non-distinctive examples:

Distinctive examples:

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A figurative element that does not represent the goods and services but has a direct link with the characteristics of the goods and services will not render the sign distinctive, unless it is sufficiently stylised.

Non-distinctive example:

Distinctive example:

the figurative element is commonly used in trade in relation to the goods and/or services applied for In general, figurative elements that are commonly used or customary in trade in relation to the goods and/or services claimed do not add distinctive character to the mark as a whole.

Non-distinctive examples:

Stylised word elements and additional figurative element(s)

In general, a combination of figurative elements and word elements, which if considered individually are devoid of distinctive character, does not give rise to a distinctive mark.

Nevertheless, a combination of such elements when considered as a whole could be perceived as a badge of origin due to the presentation and composition of the sign. This will be the case when the combination results in an overall impression that is sufficiently far removed from the descriptive/non-distinctive message conveyed by the word element.

Examples: In order for a sign to be registrable, it must have a minimum level of distinctiveness. The purpose of the scale is to illustrate where that threshold is. The examples below from left to right contain elements with an increasing impact on the distinctiveness of the marks, resulting in marks which are either non-distinctive in their totality (red column) or distinctive in their totality (green column).

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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 that consist exclusively of words or indications that 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 paragraph 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 Article 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, EU:C:2001:510, § 35).

Moreover, signs or indications that 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, EU:T:2006:87, § 52).

This ground for refusal also covers words that originally had no meaning or had another meaning, for example, ‘weiße Seiten’ (= ‘white pages’). It also covers certain abbreviations that 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 that are either frequently used pictograms or similar indications or have even become the standard designation for goods and services, for example a white ‘P’ on a blue background for parking places, the Aesculapian staff for pharmacies, or the silhouette of a knife and fork for restaurant services.

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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 hazard 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 Community 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, EU:T:2003:54, § 46; 05/10/2004, C-192/03 P, BSS, EU:C:2004:587, § 39-40). Whether a term or figurative element was non-descriptive or distinctive long before that date, 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 not become customary by the filing date (judgment of 05/03/2003, T-237/01, BSS, EU:T:2003:54, § 47; similarly, judgment of 21/05/2014, T-553/12, BATEAUX MOUCHES, EU:T:2014:264).

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 had become a term customarily used in relation to energy drinks. For further information, see the Guidelines, Part D, Cancellation, Section 2, Substantive Provisions.

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, EU:T:2011:253, § 53).

As regards the link with the goods and services 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 that has no particular customary link with the goods and services concerned (judgment of 04/10/2001, C-517/99, Bravo, EU:C:2001:510, § 27, 31).

As regards the relevant public, the customary character must be assessed by taking account of the expectations that 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, EU:T:2006:87, § 50). The Court has clarified a number of issues in this respect:

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The relevant public to be taken into account in determining the sign’s customary character comprises not only all consumers and end users but also, 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, EU:C:2004:275, § 26; 06/03/2014, C-409/12, Kornspitz, EU:C:2014:130, § 27).

 Where the trade mark targets both professionals and non-professionals (such as intermediaries and end users), it is sufficient for a sign to be refused or revoked if it is perceived to be a usual designation by any one sector of the relevant public, notwithstanding the fact that another sector may recognise the sign as a badge of origin (judgment of 06/03/2014, C-409/12, Kornspitz, EU:C:2014:130, § 23-26).

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 sole trader (other than the CTM applicant) (judgment of 07/06/2011, T-507/08, 16PF, EU:T:2011:253). In other words, a mark will not be regarded 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 result, they recognise its customary significance vis-à-vis the goods and services claimed.

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 that is not simultaneously registered by the Community Plant Variety Office in accordance with 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 given 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 trade mark applied for under Article 7(1)(c) and (b) CTMR on the ground that the trade mark applied for 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 essentially 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 that consist exclusively of (i) the shape that results from the nature of the goods themselves; (ii) the shape of goods that is necessary to obtain a technical result; or (iii) the shape that gives substantial value to the goods.

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The wording of this provision infers that it does not apply to signs for which registration is sought in respect of services.

Article 7(1)(e) CTMR does not define the category of mark that must be considered as a shape within the meaning of that provision. It makes no distinction between 2D or 3D shapes, or 2D representations of 3D shapes. Therefore, the applicability of Article 7(1)(e) CTMR is not confined to 3D shapes but also applies to other categories of marks such as figurative signs representing shapes (judgment of 6/03/2014, C-337/12, Surface covered with circles, EU:C:2014:129, § 55).

The objective pursued by Article 7(1)(e) CTMR is the same for all of its three grounds, namely to prevent the exclusive and permanent rights that a trade mark confers from serving to extend the life of other rights indefinitely, such as patents or designs, which the EU legislature has sought to make subject to limited periods (judgments of 18/09/2014, C-205/13, Hauck, EU:C:2014:2233, § 19-20; 14/09/2010, C-48/09 P, Lego brick, EU:C:2010:516, § 43; 6/10/2011, T-508/08, Loudspeaker, EU:T:2011:575, § 65).

Importantly, unlike in the situation covered by Article 7(1)(b) CTMR, the average consumer’s perception is not a decisive element when applying the ground for refusal under Article 7(1)(e) CTMR, but, at most, may be a relevant criterion for assessment by the Office when the latter identifies the sign’s essential characteristics (judgment of 18/09/2014, C-205/13, Hauck, EU:C:2014:2233, § 34).

For these reasons, an objection under Article 7(1)(e) CTMR to marks consisting of shapes that follow from the nature of the goods, shapes that are necessary to obtain a technical result or shapes giving substantial value to the goods cannot be overcome by demonstrating that they have acquired distinctive character. In other words, Article 7(3) CTMR is not applicable to such shapes, regardless of whether that particular shape might actually be distinctive in the marketplace.

It is therefore advisable to undertake a prior 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 (judgment of 6/10/2011, T-508/08, Loudspeaker, EU:T:2011:575, § 44).

For the sake of sound administration and economy of proceedings, the Office will raise any objections to registration of the sign under Article 7(1) CTMR, including Article 7(1)(e) CTMR, as soon as possible and preferably all at once, even if an objection under Article 7(1)(e) CTMR based on the facts in question is less evident than, for instance, an objection for a lack of distinctiveness under Article 7(1)(b) CTMR.

It may also be the case that following an initial objection under Article 7(1)(b) and/or (c) CTMR, the evidence submitted by the applicant shows that the sign consists exclusively of a shape as listed in Article 7(1)(e) CTMR. In these cases, a further objection under Article 7(1)(e) should be raised as well.

A sign consists ‘exclusively’ of the shape of goods when all its essential characteristics  that is, its most important elements  result from the nature of the goods (Article 7(1)(e)(i) CTMR), perform a technical function (Article 7(1)(e)(ii) CTMR) or give substantial value to the goods (Article 7(1)(e)(iii) CTMR). The presence of one or more minor arbitrary elements, therefore, will not alter the conclusion (judgment of 18/09/2014, C-205/13, Hauck, EU:C:2014:2233, § 21-22; judgment of 14/09/2010, C-48/09 P, Lego brick, EU:C:2010:516, § 51-52). However, an objection under Article 7(1)(e) CTMR would not be justified if the sign applied for were to consist of a

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shape combined with additional, distinctive matter (whether word and/or figurative elements) as the sign in its entirety would then not consist exclusively of a shape (see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, paragraph 2.2.12.3, Step 3).

The correct application of Article 7(1)(e) CTMR requires that the essential characteristics of the sign at issue be properly identified, and that the assessment may be based either on the overall impression that it produces or an examination of each of its components (judgments of 18/09/2014, C-205/13, Hauck, EU:C:2014:2233, § 21; 14/09/2010, C-48/09 P, Lego brick, EU:C:2010:516, § 70).

This identification may, depending on the case and particularly 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 assessment criteria may be taken into account, such as surveys or expert opinions, or data relating to intellectual property rights conferred previously for the goods concerned such as patents (judgment of 14/09/2010, C-48/09 P, Lego brick, EU:C:2010:516, § 71, 85).

Once the sign’s essential characteristics have been identified, it will have to be established whether they all fall under the respective ground set out in Article 7(1)(e) CTMR (judgment of 14/09/2010, C-48/09 P, Lego brick, § 72). In this respect, each of the three grounds must be applied independently of the others. In addition, where none of those grounds is fully applicable for the entire shape, they do not preclude registration of the sign (judgment of 18/09/2014, C-205/13, Hauck, EU:C:2014:2233, § 39, 42). Therefore, if parts of the shape are necessary to obtain a technical result within the meaning of Article 7(1)(e)(ii) CTMR, for instance, and the remaining parts merely give substantial value to the goods under Article 7(1)(iii) CTMR, neither of these two provisions bars the registration of the shape as a sign.

2.5.2 Shape that results from the nature of the goods

Under Article 7(1)(e)(i) CTMR, signs that consist exclusively of the shape that results from the nature of the goods themselves cannot be registered.

This ground of refusal will apply when the sign, whether 2D or 3D, consists exclusively of the only natural shape possible for the goods: for example, the realistic representation below of a banana for bananas:

Furthermore, the application of Article 7(1)(e)(i) CTMR cannot be limited to apply only to signs that consist exclusively of shapes that are indispensable to the function of the goods in question. Apart from ‘natural’ products (which have no substitute) and ‘regulated’ products (the shape of which is prescribed by legal standards), all shapes with essential characteristics that are inherent to the generic function or functions of such goods must, in principle, also be denied registration (judgment of 18/09/2014, C-205/13, Hauck, EU:C:2014:2233, § 23-25).

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The Court of Justice has not given any further guidance about exactly when a shape is inherent to the generic function(s) of goods. In the absence of any case-law in this respect, the examples given by the Advocate General may be referred to: legs with a horizontal level for a table; an orthopaedic-shaped sole with a V-shaped strap for flip- flops (opinion of 14/05/2014, C-205/13, § 59). Even considering that the opinion of the Advocate General is not binding, it can give useful guidance.

In all cases where the CTM applied for consists exclusively of the shape of the goods that follows from their nature, an objection may additionally be raised under Article 7(1)(b) and/or (c) CTMR, on the ground that the shape in question lacks distinctive character and/or 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 that consist exclusively of the shape of goods that is necessary to obtain a technical result.

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, Remington, EU:C:2002:377, and judgment of 14/09/2010, C-48/09 P, Lego brick, EU:C:2010:516), interpreting, inter alia, Article 3(1) TMD, which is the equivalent of Article 7(1) CTMR.

A sign consists ‘exclusively’ of the shape of goods that 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, Lego brick, § 51). The fact that there may be alternative 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, Lego brick, EU:C:2010:516, § 53-58).

In assessing a CTM application against Article 7(1)(e)(ii) CTMR, consideration should be given to the meaning of the expression ‘technical result’. This expression should be interpreted broadly and includes shapes that, for example:

 fit with another article;  give the most strength;  use the least material;  facilitate convenient storage or transportation.

In the ‘Red Lego Brick’ case, following a cancellation action, two instances of the Office declared the 3D shape of a building block in a construction toy set as invalid:

Sign CTM No Goods and services

CTM No 107 029 R 856/2004 G

T-270/06 C-48/09 P

Class 28 (construction toys)

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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 0856/2004-G, § 54).

The General Court dismissed the appeal against the above decision and confirmed the findings of the Grand Board, holding that the latter had correctly applied Article 7(1)(e)(ii) CTMR (judgment of 12/11/2008, T-270/06, Lego brick, EU:T:2008:483).

Following an appeal, the Court of Justice, in its ruling of 14/09/2010, C-48/09 P, ‘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 shape 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).

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, R 0042/2013-1).

A case regarding the following shape for ‘knives and knife handles’ provides an example of 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, which has a middle section with a somewhat rounded outer cross section,

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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 the 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 that gives substantial value to the goods

Under Article 7(1)(e)(iii) CTMR, signs that consist exclusively of the shape that 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 design and as a trade mark, 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 that 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’, that is to say, the likelihood that the goods will be purchased primarily because of their particular shape. When other characteristics may give the product significant value in addition to this aesthetic value, such as functional value (for instance safety, comfort and reliability), Article 7(1)(e)(iii) CTMR cannot be ruled out automatically. Indeed, the concept of ‘value’ cannot be limited purely to the shape of products having only artistic or ornamental value (judgment of 18/09/2014, C-205/13, Hauck, EU:C:2014:2233, § 29-32).

The concept of ‘value’ should not be interpreted 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, R 2520/2011-5, § 19).

Furthermore, the fact that the shape may be pleasing or attractive is not sufficient to exclude it from registration. If that were 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 the market (decision of 03/05/2000, R 0395/1999-3, Gancino quadrato singolo, § 1-2 and 22-36).

In assessing the value of the goods, account may be taken of criteria such as the nature of the category of goods concerned, the artistic value of the shape in question, its dissimilarity from other shapes in common use on the market concerned, a

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substantial price difference compared with similar products, and the development of a promotion strategy that focuses on accentuating the aesthetic characteristics of the product in question (judgment of 18/09/2014, C-205/13, Hauck, EU:C:2014:2233, § 35).

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 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.

If a shape derives its appeal from the fame of its designers and/or marketing efforts rather than from the aesthetic value of the shape itself, Article 7(1)(e)(iii) CTMR will not apply (decision of 14/12/2010, R 0486/2010-2, SHAPE OF CHAIR, § 20-21).

A 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 0497/2005-1

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 confirmed the Board of Appeal’s finding that the sign at issue fell within the scope of Article 7(1)(e)(iii) CTMR (judgment of 06/10/2011, T-508/08, Loudspeaker, EU:T:2011:575).

The General Court held that for goods such as those listed above, the design was an element that 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, which increased the appeal of the product and, therefore, its value, the General Court also noted that it was apparent from the evidence on record, namely extracts from the distributors’ websites and online 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 (judgment of 06/10/2011, T-508/08, Loudspeaker, EU:T:2011:575, § 75). The General 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.

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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 it ‘has become distinctive in relation to the goods or 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 that are per se devoid of any distinctive character, for descriptive marks, and for marks that consist exclusively of indications that 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 registered 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.

2.6.2 Request

The Office will only examine acquired distinctive character following a request from the CTM applicant. This request may be filed at any time during the examination proceedings. 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) CTMR unless the applicant has pleaded them (judgment of 12/12/2002, T-247/01, Ecopy, EU:T:2002:319, § 47).

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 or, if the designation takes place at a later stage, the designation date. 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 trade mark must be registrable on that date. Consequently, the applicant must prove that distinctive character has been acquired through use of the trade mark prior to the date

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of application for registration (judgments of 11/06/2009, C-542/07 P, Pure Digital, EU:C:2009:362, § 49 and 51; and 07/09/2006, C-108/05, Europolis, EU:C:2006:530, § 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, EU:T:2009:417, § 49).

2.6.3.2 Cancellation Proceedings

In cancellation proceedings, a trade mark that 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 that has been made of it, it has, after registration, acquired distinctive 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 that, due to the use that has been made of them, have in the meantime — that is to say, after their registration and in any event before the application for an invalidity request — acquired distinctive character for the goods or services for which they were registered, in spite of the fact that, when registration took place, it was contrary to Article 7 CTMR (judgments of 14/12/2011, T-237/10, Clasp lock, EU:T:2011:741, § 52, 53 and 86; 15/10/2008, T-405/05, Manpower, EU:T:2008:442, § 127, 146; 10/12/2008 T-365/06, Bateaux Mouches, EU:T:2008:559, § 37 and 38).

2.6.4 Consumer

Distinctive character of a sign, including that acquired through use 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 circumspect. 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 of another origin (judgment of 29/09/2010, T-378/07, RED/BLACK/GREY (Surface of a tractor), EU:T:2010:413, § 33, 38).

The relevant consumer includes, therefore, not only persons who have actually purchased the goods and services 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), EU:T:2010:413, § 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.

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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 assessed in respect of the goods and services at issue. Consequently, the applicant’s evidence must prove a link 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 (judgments of 04/05/1999, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 52; and 19/05/2009, T-211/06, Cybercrédit et al., EU:T:2009:160, § 51).

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 refused registration if an absolute ground exists only in part of the European Union.

As a logical consequence, acquired distinctiveness must be established throughout the territory in which the trade mark did not, ab initio, have such character (judgments of 22/06/2006, C-25/05 P, Bonbonverpackung, EU:C:2006:422, § 83, 86; and 29/09/2010, T-378/07, RED/BLACK/GREY (Surface of a tractor), EU:T:2010:413, § 30). Evidence from Non-EU states is irrelevant, except insofar as it might enable conclusions to be drawn about use within the EU (judgment of 24/07/2014, T-273/12, Ab in den Urlaub, EU:T:2014:568, § 45).

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’, EU:T:2011:221, § 40). It would be paradoxical to accept, on the one hand, pursuant to Article 3(1)(b) TMD, that a Member State refuses to register as a national mark a sign that is devoid of any distinctive character in its territory and, on the other, that the 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, Clasp lock, EU:T:2011, § 100).

Examples:

Evidence of acquired distinctiveness of the word mark ‘PHOTOS.COM’ in four Member States (DK, FI, SE and UK) was considered insufficient to draw valid conclusions with regard to acquired distinctiveness in a substantial part of the territory of the European Union (judgment of 21/10/2012, T-338/11, Photos/com, EU:T:2012:614, § 49).

Evidence of acquired distinctiveness of a ‘shape of two packaged goblets’ relating to eight Member States (BE, DE, FR, IT, NL, AT, SE and UK) was considered insufficient to draw valid conclusions with regard to acquired distinctiveness in a substantial part of the European Union (decision of 26/07/2012, R 1301/2011-1, shape of goblets, § 62, application dismissed in T-474/12, on other grounds).

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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 CTM applied for before the date of accession of a given Member State may only be rejected for reasons that 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 that 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 (judgment of 25/09/2014, T-474/12, Shape of goblets, EU:T:2014:813, § 58). For the possibility of extrapolating the evidence, see paragraph 2.6.6.4 below.

2.6.6.3 Language area

Where the CTM applied for is rejected with respect to its meaning in a specific language, acquired distinctiveness through use must be shown 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 the 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).

(a) Examples of languages being official languages in more than one EU Member State

Language Official language in the following Member States German Germany, Austria, Luxembourg and Belgium Greek Greece and Cyprus English United Kingdom, Ireland, Malta French France, Belgium, Luxembourg Dutch Netherlands and Belgium Swedish Sweden and Finland

(judgment of 09/07/2014, T-520/12 Gifflar, EU:T:2014:620, upholding the decision of the Second Board of Appeal from 18/09/2012, R 0046/12-2, Gifflar)

Any claim that acquired distinctiveness through use enables the CTMA to overcome an absolute grounds objection that is based on its meaning in any of the above languages must automatically be examined for all the countries where the language in question is an official one.

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(b) Understanding of a Member State language in Member States where it is not an official language

In addition to the Member States where the language of a sign’s wording is an official language, consideration must also be given to other Member States where it is not an official language but is understood. This may be because, depending on the goods and services claimed in the CTMA, the relevant public in that Member State has 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 as well as in the Member States where the language is an official one.

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, EU:T:2012:473, § 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, EU:T:2012:179, § 26), in technical fields (judgment of 09/03/2012, T-172/10, Base-seal, EU:T:2012:119, § 54) and in financial matters (judgment of 26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 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, while Denmark has a substantial German-speaking minority (judgment of 24/06/2014, T- 273/12, Ab in den Urlaub, EU:T:2014:568, § 44).

2.6.6.4 Extrapolation

As indicated above, the acquisition of distinctive character through use must be proven for the part of the European Union in which the trade mark concerned did not initially have such character. This may prove difficult and burdensome for the applicant, particularly with regard to three-dimensional or colour marks, where consumer perception of a potential lack of inherent distinctiveness will most likely be the same in each and every Member State of the European Union.

In this respect, the Court has held that, despite the fact that acquired distinctiveness must be shown throughout the European Union, it would be unreasonable to require proof of acquired distinctiveness for each individual Member State (judgment of 24/05/2012, C-98/11 P, ‘Hase’, EU:C:2012:307, § 62). This principle implies that, if one considers the European territory as a puzzle, failure to prove acquired distinctiveness for one or more specific national markets may not be decisive provided that the ‘missing piece’ of the puzzle does not affect the general picture that a significant

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proportion of the relevant European public perceives the sign as a trade mark in the various parts or regions of the European Union.

In this context the question arises 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.

Extrapolating in this way to make broader inferences is of particular relevance to an enlarged European Union comprising many Member States, since it is highly likely that a party will not 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 following two conditions are met.

 The market is homogenous (i.e. the area where acquired distinctiveness is proven and the area where evidence is extrapolated): market conditions and 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.

 At least some evidence of use is submitted for the area where the evidence is extrapolated. Therefore, where the CTM is used in the entire relevant territory but most of the evidence only refers to part of it, inference is possible if the circumstances are comparable and some evidence of use in another part/other parts of the relevant territory is submitted.

Evidence of acquired distinctiveness for the ‘combination of the colours green and yellow’ throughout the European Union was accepted despite a lack of evidence with regard to current turnover figures and no official statements on the relevant public’s perception for two Member States (judgment of 28/10/2009, T-137/08, Green/Yellow, EU:T:2009:417, § 38 et seq.)

On the other hand, the GC rejected the claim of acquired distinctiveness for a ‘chequerboard pattern’ because the applicant had not provided any relevant evidence in 4 out of the then 15 relevant Member States, without examining the evidence filed for the other 11 Member States (judgment of 21/04/2015, T-359/12, Device of a chequered pattern (maroon & beige), EU:T:2015:215, § 101 et seq., not yet final).

Finally, the Court has held that the case-law relating to Article 7(3) CTMR must not be confused with the case-law relating to the acquisition of reputation (which must be shown in a substantial part of the European Union and not in every Member State). The applicant must prove the acquisition of distinctive character through use in the part of the European Union in which the contested mark was devoid of any distinctive character. The case-law related to Article 7(3) CTMR must therefore not be confused with the test on acquisition of reputation (judgment of 21/04/2015, T-359/12, Device of a chequered pattern (maroon & beige), EU:T:2015:215, § 119-120 and case-law quoted therein, not yet final).

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2.6.7 Standard of proof

The requirements to prove acquired distinctiveness through use pursuant to Article 7(3) CTMR are not the same as those to prove genuine use pursuant to Article 42(2) CTMR. Whilst under Article 7(3) CTMR it is necessary to prove qualified use, such that the relevant public perceives as distinctive a sign that per se is devoid of distinctive character, the reason behind the proof of genuine use is completely different, namely to restrict the number of trade marks registered and protected, and consequently the number of conflicts between them.

Therefore, the CTM applicant must submit evidence that enables the Office to find that at least a significant proportion of the relevant section of the public identifies the products or services concerned as originating from a particular undertaking because of the trade mark (judgment of 15/12/2015, T-262/04, Briquet Pierre, EU:T:2005:463, § 61 and the case-law cited therein).

The evidence must be clear and convincing. The CTM applicant must clearly establish all the facts necessary to safely conclude that the mark has been used as a badge of origin, that is to say, that it has created a link in the mind of the relevant public with the goods or services provided by a specific company, despite the fact that, in the absence of such use, the sign at issue would lack the necessary distinctiveness to create such a link.

For example, the combination of the colours green and yellow was found to have acquired distinctiveness through use because it referred to the machines manufactured by a certain company. The means of evidence were a number of statements from professional associations according to which such combination referred to agricultural machines manufactured by that company and the fact that such company had been using the same combination of colours on its machines consistently in the European Union for a considerable time prior to 1996 (judgment of 28/10/2009 T-137/08, Green/Yellow, EU:T:2009:417, § 36-37).

Therefore, acquired distinctiveness must be the result of the use of the mark as a trade mark, not as purely functional packaging (judgment of 25/09/2014, T-474/12, Shape of goblets, EU:T:2014:813, § 56-58 and the case-law cited therein) or as a descriptive indication on packaging. For example, use of the sign ‘Gifflar’ (which indicates a kind of bread in Swedish) on the packaging of pastries, together with descriptive indications of flavours, is made in a descriptive context, not as a badge of origin (judgment of 09/07/2014, T-520/12, Gifflar, EU:T:2014:620, § 44-45).

For a finding of acquired distinctiveness through use, the case-law does not prescribe fixed percentages of market penetration or of recognition by the relevant public (judgment of 19/06/2014, C-217/13 and C-218/13, Oberbank & Banco Santander, EU:C:2014:2012, § 48). Rather than using a fixed percentage of the relevant public in a given market, the evidence should show that a significant proportion of the public perceives the mark as identifying specific goods or services from a particular undertaking.

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 services claimed for which acquired distinctiveness through use has been proven may proceed to registration.

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2.6.8 Assessment of the evidence

In establishing acquired distinctiveness, account may be taken of, inter alia, the following factors:

 the market share held by the mark with regard to the relevant goods or services;  how intensive, geographically widespread and long-standing use of the mark has

been;  the amount invested by the undertaking in promoting the mark for the relevant

goods or services;  the proportion of the relevant public who, because of the mark, identifies the

goods or services as originating from a particular undertaking.

See judgments of 04/05/1999, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 31; and 29/09/2010, T-378/07, ‘RED/BLACK/GREY (Surface of a tractor)’, § 32.

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. Examples of evidence that may help to show acquired distinctiveness include, inter alia:

 sales brochures  catalogues  price lists  invoices  annual reports  turnover figures  advertising investment figures and reports  advertisements (press cuttings, billboard posters, TV adverts) together with

evidence of their intensity and reach

customer and/or market surveys  affidavits.

For further details on means of evidence, see by analogy the Guidelines, Part C, Opposition, Section 5, Trade Marks with Reputation (Article 8(5) CTMR), paragraph 3.1.4.4.

The basic rules on the evaluation of evidence are also applicable here. The Office must make an overall assessment of all the evidence submitted (judgment of 04/05/1999, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 49), weighing up each indication against the others.

Applicants should take great care to make sure not only that the evidence shows 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. Evidence that cannot be related to a certain point in time 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. Furthermore, evidence that mixes material relating to EU with that relating to non-EU territories, and does not

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permit the Office to identify the specific extent of EU-only use will be similarly devoid of probative value for the relevant EU public.

The General Court has declared that direct evidence such as declarations by professional associations and market studies are usually the most relevant means for proving acquired distinctiveness through use. Invoices, advertising expenditure, magazines and catalogues may help to corroborate such direct evidence (judgment of 29/01/13, T-25/11, Cortadora de cerámica, EU:T:2013:40, § 74).

In order to assess the evidential value of a document, regard should be had to its credibility. It is also necessary to take into account the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, superficially, the document appears sound and reliable (judgments of 07/06/2005, T-303/03, Salvita, EU:T:2005:200, § 42; and 16/12/2008, T-86/07, DEITECH, EU:T:2008:577, § 46 et seq.).

2.6.8.1 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 easy matter to correctly formulate and implement an opinion poll so that it can be seen to be truly neutral and representative. 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.

Accordingly, any opinion poll evidence must be assessed carefully. It is important that the questions asked are not leading ones (judgment of 13/09/12, Case T-72/11, Espetec, EU:T:2012:424, § 79). The criteria for selecting the public interviewed must be assessed carefully. The sample must be indicative of the entire relevant public and must be selected randomly (judgment of 29/1/13, T-25/11, Cortadora de cerámica, EU:T:2013:40, § 88).

The Court does not exclude 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, EU:T:2006:202, § 38-39).

However, the Court of Justice has made it clear that the results of a consumer survey cannot be the only decisive criterion in support of the conclusion that distinctive character has been acquired through use (judgment of 19/06/2014, C-217/13 and C-218/13, Oberbank & Banco Santander, EU:C:2014:2012, § 48). They must therefore be complemented by other means of evidence.

For further details on the assessment of opinion polls, see the Guidelines, Part C, Opposition, Section 5, Trade Marks with Reputation Article 8(5) CTMR, paragraph 3.1.4.4.

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2.6.8.2 Market share, advertising and turnover

The market share held by the trade mark in relation to the goods and/or services applied for may be relevant for assessing whether that mark has acquired distinctive character through use, since such market penetration might enable the Office to infer that the relevant public would recognise the mark as identifying the goods or services as originating from a specific undertaking, and thus distinguishing them from the goods and services of other undertakings.

The investment in advertising or promoting the mark in the relevant market for the goods or services claimed may also be relevant for assessing whether the mark has acquired distinctive character through use (judgment of 22/06/2006, C-25/05 P, Bonbonverpackung, EU:C:2006:422, § 76 et seq.). However, many attempts to prove distinctiveness acquired through use fail because the evidence provided by the applicant is not sufficient to prove a link between the market share and advertising, on the one hand, and consumer perceptions on the other.

Information concerning turnover and advertising expenses is one of the most readily available forms of evidence. 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 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 is thus necessary to identify with precision the turnover/advertising figures and evidence relating to the mark applied for, as well as their link to the relevant goods and services. Furthermore, it is desirable that the figures be segregated on an annual and market-by-market basis. The evidence should show the specific period(s) of use (including details of when use commenced), so that the Office is able to establish whether the evidence proves that the trade mark acquired distinctiveness before the filing date.

Goods and services are often marketed under several trade marks, which makes it difficult to see the relevant customer’s perception of the CTM applied for on its own, that is to say, without such perception being affected by the other marks present. Turnover and advertising figures 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. As a consequence, 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.

For further details on the assessment of market share, advertising and turnover, see the Guidelines, Part C, Opposition, Section 5, Trade Marks with Reputation Article 8(5) CTMR, paragraph 3.1.4.4.

2.6.8.3 Declarations, affidavits and written statements

Pursuant to Article 78(1)(f) CTMR, ‘statements in writing, sworn or affirmed or having a similar effect under the law of the State in which [they are] drawn up’, are valid means of evidence. With regard to admissibility, it is necessary only in cases where the statements have not been sworn or affirmed 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,

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SALVITA, EU:T:2005:200, § 40). In case of doubt as to whether a statement has been sworn or affirmed, it is up to the applicant to submit evidence in this regard.

The weight and probative value of statutory declarations is determined by the general rules applied by the Office to the assessment of such evidence. In particular, both the capacity of the person giving the evidence and the relevance of the contents of the statement to the particular case must be taken into account.

Statements from independent trade associations, consumer organisations and competitors are an important means of evidence insofar as they come from independent sources. However, they must be examined carefully, as they might not be enough to prove distinctiveness acquired through use if, for example, they refer to ‘the trade marks of the applicant’ instead of to the specific mark in question (judgment of 13/09/12, Case T-72/11, Espetec, EU:T:2012:424, § 83-84).

Evidence from suppliers or distributors should, generally, be given less weight, since it is less likely that their evidence will be from an independent perspective. In this regard, the degree of independence 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, EU:T:2009:417, § 54-56).

Insofar as a declaration is not made by an independent third party, but by a person connected to the applicant through an employment relationship, it cannot in itself constitute sufficient evidence that the mark applied for has acquired distinctive character through use. In consequence, it must be treated as merely indicative and needs to be corroborated by other evidence (judgment of 21/11/2012 T-338/11, Photos/com, EU:T:2012:614, § 51)

For further details on the assessment of opinion polls, see the Guidelines, Part C, Opposition, Section 5, Trade Marks with Reputation Article 8(5) CTMR, paragraph 3.1.4.4.

2.6.8.4 Prior registrations on acquired distinctiveness

For evidence that consists of or includes Member State registrations obtained on the 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 are not binding, but may be taken into account, provided that the Office is able to assess the evidence submitted to the national IP office in question.

The applicant may also refer to prior national registrations where no acquired distinctiveness is claimed. Nevertheless, it is established case-law that such registrations do not bind the Office. Moreover, the Office is not bound by its previous decisions and such cases must be assessed on their own merits (judgment of 21/5/2014, T-553/12, EU:T:2014:264, Bateaux-Mouches, EU:T:2014:264, § 72 and 73).

2.6.8.5 Other means of evidence

Other means of evidence include statements from chambers of commerce and industry or other trade and professional associations and certifications and awards. The Court has noted that such statements and certifications must identify

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precisely the trade mark applied for (judgment of 13/09/2012, T-72/11, ‘Espetec’, EU:T:2012:424, § 82 et seq.).

See further details on other means of evidence in the Guidelines, Part C, Opposition, Section 5, Trade Marks with Reputation (Article 8(5) CTMR), paragraph 3.1.4.4.

However, cease and desist letters against competitors or letters to newspapers complaining against the use of the sign in a generic sense have been considered evidence against acquired distinctiveness (judgment of 21/5/2014, T-553/12, Bateaux- Mouches, EU:T:2014:264, § 66)

2.6.8.6 Manner of use

Acquired distinctiveness must be demonstrated with respect to the sign applied for. The evidence should show examples of how the trade mark is actually used (brochures, packaging, samples of the goods, etc.). Use of a substantially different trade mark should not be given any weight. However, in accordance with Article 15(1)(a) CTMR, minor amendments to the sign that do not alter its distinctive character may be allowed (decisions of 15/01/2010, R 0735/2009-2, PLAYNOW; and 09/02/2010, R 1291/2009-2, EUROFLORIST).

It is possible to prove acquired distinctiveness of a sign that has been used together with other trade marks (judgment of 28/10/2009, T-137/08, Green/Yellow, EU:T:2009:417, § 27), provided that the relevant consumer attributes to the sign in question the function of identification (judgments of 07/07/2005, C-353/03, Have a break, EU:C:2005:432; 30/09/2009, T-75/08, ‘!’ (fig.), EU:T:2009:374, § 43; and 28/10/2009, T-137/08, Green/Yellow, EU:T:2009:417, § 46). For instance, the Court considered that the use of the sign ‘Gifflar’ (which indicates a kind of bread in Swedish) on the packaging of pastries, together with the trade mark Pågen, was made in a descriptive context, not as a badge of origin (judgment of 09/07/2014, T-520/12, Gifflar, EU:T:2014:620, § 44-45).

2.6.8.7 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 potential customers have been exposed to a mark the more likely they are to have made the connection between that mark and a particular source in trade.

Considering, however, that length of use is only one of the factors to be taken into account, there may be situations where exceptions to the above rule are justified, in particular when other factors may also come into play that 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 in long use, it may be the 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 that essentially reproduces

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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 immediately 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 events are anticipated by millions, and the knowledge that the event is due on a particular date precedes 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 (‘city/country+year’ marks). It is therefore reasonable to suppose that the moment a particular event, tournament or games is announced as having been allocated to a particular city or country, it is likely to become known instantly to practically all relevant consumers with an interest in the sector 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 rapid acquired distinctiveness will follow the general criteria regarding, for instance, extent of use, territory, relevant date or targeted public, as well as regarding the onus on the applicant to provide evidence thereof. The only particularity refers to 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 trade mark in question as a distinctive sign.

2.6.8.8 Post-filing date evidence

The evidence must show that prior to the filing date, the trade mark had acquired distinctive character through use.

However, this does not preclude the possibility that account may be taken of evidence that, although subsequent to the filing date, enables conclusions to be drawn regarding the situation as it was on the filing date (judgment of 19/06/2014, C-217/13, Oberbank & Banco Santander, EU:C:2014:2012, § 60). Therefore, evidence cannot be rejected merely because it post-dates the filing date. Accordingly, such evidence must be assessed and given due weight.

As an example, a trade mark that enjoys particularly relevant recognition on the market or a substantially relevant market share a few months after the filing date may have had 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 that was found inherently registrable upon examination.

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If the CTM application is accepted based on Article 7(3) CTMR, this information is published in the CTM Bulletin, using INID code 521.

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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

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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

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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 procedure that takes place before OHIM when a third party, on the 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 opposition 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 EU. 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 range 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).

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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 analysis 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 uses 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 registered). For a detailed 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 different earlier rights, may be alleged in either the same or multiple oppositions to the same CTMA.

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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 eventually 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.

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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.

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 C

OPPOSITION

SECTION 1

PROCEDURAL MATTERS

Procedural Matters

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Table of Contents

1 Introduction: General Outline of 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 ............................................................................................. 8

2.2.2.1 Payment by bank transfer............................................................................9 2.2.2.2 Payment by current account........................................................................9

2.2.3 Consequences in the event of non-payment.................................................. 9

2.3 Languages and translation of the notice of opposition......................... 10 2.3.1 Language of proceedings ............................................................................. 10 2.3.2 Language of the notice of opposition and translations ................................. 11 2.3.3 Examples ...................................................................................................... 11

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 marks/signs .......................................................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 ...................................................................................................28 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 .......................................................................................... 33

4.2.1 CTMs and CTM applications ........................................................................ 33 4.2.2 Converted CTM(A)s...................................................................................... 34

4.2.2.1 Opposition based on CTM(A) (to be) converted ........................................34 4.2.2.2 Opposition based on CTM(A) that is subsequently converted...................34

4.2.3 Trade mark registrations or applications that are not CTMs ........................ 34 4.2.3.1 Certificates issued by the appropriate official body ...................................35 4.2.3.2 Extracts from official databases.................................................................35

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4.2.3.3 Extracts from official bulletins of the relevant national trade mark offices and WIPO..................................................................................................37

4.2.3.4 Duration of a trade mark registration .........................................................37 4.2.3.5 Verification of evidence .............................................................................38 4.2.3.6 Renewal certificates ..................................................................................40 4.2.3.7 Entitlement to file the opposition................................................................40

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 .......................... 41 4.2.4.1 Well known marks .....................................................................................41 4.2.4.2 Marks with reputation ................................................................................42 4.2.4.3 Non-registered trade mark or another sign used in the course of trade ....42 4.2.4.4 Mark filed by an agent or representative ...................................................42

4.2.5 Sanction........................................................................................................ 43

4.3 Translation/changes of language during the opposition proceedings.43 4.3.1 Translations of evidence of trade mark registrations and of facts,

evidence and arguments submitted by the opponent to complete its file .... 43 4.3.1.1 Sanction ....................................................................................................45

4.3.2 Translation of further observations ............................................................... 45 4.3.3 Translation of documents other than observations ...................................... 46 4.3.4 Proof of use .................................................................................................. 47 4.3.5 Change of language during opposition proceedings .................................... 47

4.4 Documents not readable/reference to other files................................... 48 4.4.1 Documents not readable .............................................................................. 48 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 ................................................................................... 50 4.5.1 Additional evidence for proof of use ............................................................. 51

4.6 Observations by third parties.................................................................. 51

5 Termination of Proceedings ................................................................... 52 5.1 Friendly settlement................................................................................... 52 5.2 Restrictions and withdrawals .................................................................. 52

5.2.1 Restrictions and withdrawals of CTM applications ....................................... 52 5.2.1.1 Withdrawal or restriction before the admissibility check is made...............53 5.2.1.2 Restrictions and withdrawals of CTM applications before the end of the

cooling-off period.......................................................................................54 5.2.1.3 Restrictions and withdrawals of CTM applications after the end of the

cooling-off period.......................................................................................55 5.2.1.4 Restrictions and withdrawals of CTM applications after a decision has

been taken.................................................................................................55 5.2.1.5 Language ..................................................................................................56

5.2.2 Withdrawal of oppositions............................................................................. 56 5.2.2.1 Withdrawal of the opposition before the end of the cooling-off period .......56 5.2.2.2 Withdrawal of the opposition after the end of the cooling-off period ..........56 5.2.2.3 Withdrawal of the opposition after a decision has been taken...................57 5.2.2.4 Language ..................................................................................................57

5.2.3 Withdrawals of withdrawals/restrictions........................................................ 57

5.3 Decision on substance............................................................................. 57 5.3.1 Earlier right not proven ................................................................................. 58 5.3.2 Ceasing of existence of the earlier right ....................................................... 58

5.4 Fee refund................................................................................................. 59

Procedural Matters

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5.4.1 Opposition deemed not entered ................................................................... 59 5.4.1.1 Opposition and withdrawal of the opposition filed the same date ..............59 5.4.1.2 Refund after republication .........................................................................59

5.4.2 Refund in view of withdrawals/restrictions of CTM application .................... 59 5.4.2.1 CTM application withdrawn/restricted before the end of the cooling-off

period ........................................................................................................59 5.4.2.2 Opposition withdrawn due to restriction of CTM application within the

cooling-off period.......................................................................................59 5.4.3 Multiple oppositions and refund of 50 % of the opposition fee..................... 60 5.4.4 Cases where the opposition fee is not refunded .......................................... 60

5.4.4.1 Opposition withdrawn before the end of the cooling-off period NOT due to a restriction............................................................................................60

5.4.4.2 Opponent’s withdrawal is earlier................................................................60 5.4.4.3 Settlement between the parties before commencement of proceedings ...60 5.4.4.4 Termination of proceedings for other reasons ...........................................61 5.4.4.5 Reaction on disclaimer ..............................................................................61

5.5 Decision on the apportionment of costs ................................................ 61 5.5.1 Cases in which a decision on costs must be taken ...................................... 61 5.5.2 Cases in which a decision on costs is not taken .......................................... 62

5.5.2.1 Agreement on costs ..................................................................................62 5.5.2.2 Information from potential ‘successful party’..............................................62

5.5.3 Standard cases of decisions on costs .......................................................... 62 5.5.4 Cases that did not proceed to judgment....................................................... 63

5.5.4.1 Multiple oppositions...................................................................................63 5.5.4.2 Rejection of an application on the basis of absolute grounds or

formalities ..................................................................................................64 5.5.4.3 Cases of joinder ........................................................................................64 5.5.4.4 The meaning of ‘bear one’s own costs’ .....................................................65

5.6 Fixing of costs .......................................................................................... 65 5.6.1 Amounts to be reimbursed/fixed................................................................... 65 5.6.2 Procedure if the fixing of costs is contained in the main decision ................ 66 5.6.3 Procedure if a separate fixing of costs is needed......................................... 66

5.6.3.1 Admissibility...............................................................................................66 5.6.3.2 Evidence....................................................................................................67

5.6.4 Review of fixing of costs ............................................................................... 67

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 ........................................ 68

6.2 Time limits ................................................................................................ 68 6.2.1 Extension of time limits in opposition proceedings....................................... 69

6.2.1.1 Non-extendable and extendable time limits...............................................69 6.2.1.2 Request made in time ...............................................................................69 6.2.1.3 Extension of a time limit by the Office on its own initiative.........................70 6.2.1.4 Signature ...................................................................................................70

6.3 Suspension............................................................................................... 71 6.3.1 Suspension requested by both parties ......................................................... 71 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 ...........................72 6.3.2.2 Earlier CTM applications or registrations...................................................73 6.3.2.3 Earlier national/international marks (applications or registrations/rights)...73 6.3.2.4 Examples...................................................................................................73

6.3.3 Multiple oppositions ...................................................................................... 74 6.3.3.1 After rejection of the CTM application .......................................................74

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6.3.4 Procedural aspects ....................................................................................... 74 6.3.4.1 Monitoring suspended files........................................................................74 6.3.4.2 Resuming the proceedings........................................................................75 6.3.4.3 Calculation of time limits............................................................................75

6.4 Multiple oppositions................................................................................. 76 6.4.1 Multiple oppositions and restrictions ............................................................ 76 6.4.2 Multiple oppositions and decisions ............................................................... 76 6.4.3 Joinder of proceedings ................................................................................. 78

6.5 Change of parties (transfer, change of name, change of representative, interruption of proceedings).......................................... 79 6.5.1 Transfer and opposition proceedings ........................................................... 79

6.5.1.1 Introduction and basic principle .................................................................79 6.5.1.2 Transfer of earlier CTM .............................................................................79 6.5.1.3 Transfer of earlier national registration......................................................81 6.5.1.4 Opposition based on a combination of CTM registrations and national

registrations...............................................................................................82 6.5.1.5 Transfer of the contested CTM application................................................82 6.5.1.6 Partial transfer of a contested CTM application.........................................82

6.5.2 Parties are the same after transfer ............................................................... 83 6.5.3 Change of names ......................................................................................... 83 6.5.4 Change of representatives ........................................................................... 83 6.5.5 Interruption of the proceedings due to death or legal incapacity of the

applicant or its representative....................................................................... 84 6.5.5.1 Death or legal incapacity of the applicant ..................................................84 6.5.5.2 Applicant prevented from continuing the proceedings before the Office

owing to legal reasons (e.g. bankruptcy) ...................................................84 6.5.5.3 Death or prevention for legal reasons of the representative of the

applicant before the Office to act...............................................................85

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1 Introduction: General Outline of Opposition Proceedings

Opposition proceedings start with receipt of the notice of opposition. The applicant is notified of the notice of opposition filed and receives a copy of the documents on file.

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 Regulations.

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-extendable 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 the 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 the parties are incentivised to negotiate an agreement because, if certain conditions are met, the opposition fee will be refunded — 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 submit all evidence and observations it considers necessary to make its case. After these two months have lapsed, and once the submitted evidence and observations (if any) have been forwarded, the applicant has two months to reply to the opposition.

At this stage, the applicant can require the opponent to prove that any earlier marks registered for more than five years have been used by filing a request for proof of use. If such a request is made, the applicant may wait until the opponent has adduced such proof before filing its evidence and observations. The opponent is then given the opportunity to comment on the applicant’s observations.

If the applicant does not request proof of use but submits 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.

In some cases it may 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.

The Office may request the parties to restrict their observations to particular issues, permitting observations on other issues at a later point in time.

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Once the parties have submitted their observations, the proceedings are closed, the file is ready for taking a decision on substance and the parties are informed accordingly.

When an opposition is filed against an international registration designating the EU, all references in the Guidelines to CTM applications must be read as including international registrations designating the EU. Part M of the Guidelines, International Marks, which has been drafted specifically for international marks, also refers to oppositions.

2 Admissibility Check

2.1 Notice of opposition in writing

Article 41 CTMR Rule 16a CTMIR Rule 82 and Decision EX-132 of the President of the Office

The notice of opposition has to be received 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 may be filed by using the electronic form available in the User Area of the Office’s website. Once submitted, the electronic form will be processed automatically and a receipt for the opponent will be issued. A notice of opposition may also be filed by fax, post or personal delivery, and in all these cases the opponent will also be sent a receipt after the notice of opposition has been keyed into the Office’s IT system.

The applicant 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

Article 156(2) CTMR Rule 114(3) CTMIR

Opposition against an international registration designating the EU (IR) may be filed between the sixth and the ninth month following the date of first re-publication. 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.

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. The opponent will be informed accordingly. If the opposition is withdrawn before that date, the opposition fee will be refunded.

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2.1.2 Early opposition against a CTM application

Articles 39 and 41 CTMR

Any notice of opposition against a CTM application received before commencement of the opposition period 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. The opponent will be informed accordingly. If the opposition is withdrawn before that date or the CTM application is refused or withdrawn before publication, the opposition fee will be refunded.

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 notified and may comment on the finding of inadmissibility within the time limit set by the Office.

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 opposition period or if the opponent does not reply within the set time limit, a decision ruling the opposition inadmissible has to be taken. When notifying the opponent of the decision, the applicant must be sent a copy.

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 not received within the opposition period, the notice of opposition is deemed not to have been entered.

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2.2.2.1 Payment by bank transfer

Payments by bank transfer received after the opposition period are considered to be made within the opposition period if the opponent (i) files evidence showing that it gave the transfer order to a banking establishment within the opposition period and (ii) pays a surcharge of 10 % of the opposition fee. No surcharge will be payable if the evidence shows that the order to the bank was given no less than 10 days before the expiry of the opposition period.

2.2.2.2 Payment by current account

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 a 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 absence of an indication or incorrect indication of the amount of the opposition fee does not have any negative effect on the opposition, because it is clear that the opponent wanted to pay the amount of the opposition fee.

Even if there is no express request from the opponent, the existence of a current account will in such 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 an opposition fee by debiting a current account held by a third 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.

Payment is considered to be made on the date the Office receives the authorisation.

2.2.3 Consequences in the event of non-payment

Rule 17(1), (4) and Rule 54 CTMIR

An opposition for which the payment is not made within the opposition period will be deemed not to have been entered and the opponent must be notified of this finding.

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A copy of this letter must be sent to the applicant for information purposes at the same time.

If, within the time limit allowed, the opponent submits evidence that the Office finds that the loss of rights was inaccurate, and it proves that the payment was made on time, a notification has to be sent with a copy to the applicant, together with the evidence provided by the opponent.

If an opposition is deemed not to have been entered, the opponent has the right to request a formal decision within two months. If it does so, the decision must be sent to both parties.

For cases in which the opposition fee has not been paid in full or after the opposition period, see paragraph 5.4.1 below.

2.3 Languages and translation of the notice of opposition

Article 119(5), (6) CTMR Rule 16 and Rules 17(3), 83(3) and 95(b) CTMIR

2.3.1 Language of proceedings

The rules regarding the language of proceedings are explained in detail in the Guidelines, Part A, General Rules, Section 4, Language of Proceedings.

According to these rules, in opposition proceedings there are cases where the opponent has a choice between two possible languages of proceedings (the first and second languages of the contested CTMA, both being languages of the Office), and cases where there is only one possible language of proceedings (when the first language is not one of the five languages of the Office, the language of the opposition proceedings will be the second language of the contested CTMA).

In cases where there is a choice, the language of proceedings will be that expressly indicated by the opponent in the notice of opposition or, in the absence of an express indication, the language in which the notice of opposition was filed, provided in both cases that it is one of the two possible languages of proceedings. If the opponent indicates a language that is incorrect, or does not indicate any language and the notice of opposition is not filed in one of the two possible languages of proceedings, the Office will send a letter to the opponent asking it to indicate the language of proceedings within a specified time limit. The letter will be sent in the first language of the contested CTMA. If no reply is received to this letter, the opposition will be rejected as inadmissible.

In cases where there is no choice, there is no need to ask the opponent to indicate a language of proceedings, so the Office will consider that the language of proceedings is the second language of the CTM application, regardless of any possible incorrect indication of a different language in the notice of opposition.

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2.3.2 Language of the notice of opposition and translations

The notice of opposition is filed in one of the five languages of the Office.

If the notice of opposition is filed in a language that cannot be the language of proceedings, in accordance with what has been explained in the previous section, a distinction will be made depending on whether it has been filed using one of the official opposition forms provided by the Office or not.

1. When the Office’s official opposition form has been used, in any of the official languages of the EU, there is no need to submit a translation of the notice of opposition as such, since when the opposition is notified, a blank form in the language of the proceedings will be annexed by the Office.

If the textual elements important for admissibility do not need to be translated (e.g. numbers, names or addresses) and all the appropriate boxes are ticked, the opposition will be admissible.

If there are some textual elements important for admissibility that need to be translated into the language of proceedings (e.g. the goods and services on which the opposition is based, see paragraph 2.4.2.3 below), the corresponding admissibility deficiency will be issued.

Finally, if there are some textual elements that are not translated but are not relevant for admissibility purposes, such as an explanation of grounds (optional indication), they will be deemed not to ‘exist’. For more information see paragraph 2.4 Admissibility check below.

2. When the Office’s official opposition form has not been used:

If the notice of opposition is in one of the languages of the Office that cannot be the language of proceedings, and in accordance with Article 119(6) CTMR and Rule 16(1) CTMIR, the opponent will on its own initiative file a translation in the language of proceedings within one month from the expiry of the opposition period. If none is received the opposition is inadmissible.

If the notice of opposition is not in one of the five languages of the Office, and in accordance with Article 119(5) CTMR, the opposition is inadmissible.

In both cases, if no language of proceedings (or an incorrect one) has been indicated in the notice of opposition, the notification of the inadmissibility will be sent in the first language of the contested CTMA if it is a language of the Office, or otherwise in the second language of the contested CTMA.

2.3.3 Examples

As an illustration of what has been explained in paragraphs 2.3.1 and 2.3.2, here are some examples:

a) The languages of the CTM application are PT and EN. The Portuguese language version of the official form has been used, none of the textual elements relevant for admissibility need to be translated 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

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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 official form has been used, none of the textual elements need to be translated and the appropriate boxes are ticked. As the language of proceedings can be either DE or EN, the opponent must be asked to indicate the language of the opposition proceedings. Once the opponent has indicated one of the possible languages of proceedings, the opposition will be admissible. When the opposition is notified, a blank official form in the indicated language must be attached.

c) The languages of the CTM application are DE and EN. The notice of opposition has not been filed using the official form, it is in French and no choice of language of proceedings has been indicated. The opponent will submit on its own initiative a translation of the notice of opposition into either DE or EN within a period of one month of the expiry of the opposition period. Otherwise the opposition will be rejected as inadmissible, and the corresponding notification will be sent in DE.

d) The languages of the CTM application are CZ and EN. The notice of opposition has not been filed using the official form and is in Czech. The opposition will be rejected as inadmissible and the corresponding notification will be sent in EN.

2.4 Admissibility check

Rules 15 and 17 CTMIR

The admissibility check covers both absolute and relative requirements:

 absolute requirements are the indications and elements that must be present in the notice of opposition or submitted by the opponent on its own initiative within the opposition period, as laid down in Rule 15(1) and Rule 15(2)(a)-(c) CTMIR;

 relative requirements are 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-extendable time limit of two months, as laid down in Rule 15(2)(d)-(h) CTMIR;

 optional indications (that determine the scope of the opposition but do not in principle lead to a finding of non-admissibility) are laid down in Rule 15(3) CTMIR.

For the purposes of assessing the admissibility of the opposition the Office must base itself solely on the claims contained in the documents submitted by the opponent within the opposition period (decision of 21/07/2014, R 1573/2013-4, OKAY/O-Key).

2.4.1 Absolute admissibility requirements

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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 at least 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 more than one earlier right and at least one of 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.

If necessary, the admissibility issue will be dealt with in the decision on the opposition.

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

Rule 15(2)(a) and Rule 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 optional 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 Rule 15(2)(b) and Rule 17(2) CTMIR

Identification elements are to be looked 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 earlier right to be earlier it must have, in the absence of any priority, an application date that is prior to the day on which the contested CTMA was filed. In the 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, Rizo, EU:C:2012:157).

Sometimes an opposition is based on one or more marks or other rights that are not earlier than the CTM application. Establishing whether a right is earlier takes place 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 that 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 not earlier, the Office will notify the admissibility of the opposition on the basis of the earlier one.

Earlier trade mark registrations or applications

Article 8(2)(a), (b) and Article 34(2) CTMR Rule 15(2)(b) and Rules 17(2) and 19(1) and (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 CTM can be taken into account within the meaning of Article 8(2)(a) CTMR provided that the proprietor of the CTM has surrendered the earlier mark or allowed it to lapse within the meaning of Article 34(2) CTMR and that this fact is proved by the opponent.

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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 the 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 Office, 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 surrendered 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 submitted. Such rights will be properly 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 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. Where a certificate of an international registration is concerned it is assumed that the opposition is based on this mark in all the designated Member States and/or the Benelux countries indicated in the certificate. However, the basic registration is an independent earlier right, which may be claimed separately.

Trade marks filed by an agent

Article 8(3) CTMR Rule 15(2)(b)(i) CTMIR

A trade mark filed by an agent is a contested CTM application in relation to which the opponent claims that the applicant, who has or had a business relationship with the opponent (its agent or its representative), applied for the mark without its consent.

The earlier marks or rights on which the opposition is based must be identified according to the same criteria as earlier trade mark registrations or applications, that is to say, the country and registration or application number must be given. The representation of the mark (in colour if applicable) must be given only if the proprietor’s earlier mark 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

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provided. See also the Guidelines, Part C, Opposition, Section 3, Unauthorised Filing by Agents of the TM Proprietor (Article 8(3) CTMR).

Earlier trade mark registrations or applications with reputation

Article 8 (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 for which goods/services the mark is reputed is a relative admissibility requirement.

Earlier well-known mark

Article 8(2)(c) CTMR Rule 15(2)(b)(i), (ii) and Rule 17(2) CTMIR

Article 8(2)(c) CTMR protects well-known marks within the meaning of Article 6bis of the Paris Convention. This can be a registered or an unregistered mark or a mark that is not registered in the territory where it is to be protected (irrespective of 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 deduced 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 that 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 Rule 15(2)(b)(iii) and Rule 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, inter alia 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 the applicant’s defence depends on it. ‘Trade name’, ‘company name’, ‘business sign’, ‘passing off’, ‘titles of protected literary/artistic works’ are acceptable indications of the nature of rights. By contrast, 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 Article 8(4) CTMR, e.g. a copyright or a design, 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 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 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) CTMR.

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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Otherwise, before rejecting the opposition, a careful assessment of the entire notice of opposition must be made: whether 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 notification of the deficiencies. If the opponent remedies the deficiencies, the opposition is considered admissible; if not, it will be rejected 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 applications or registrations invoked under Article 8(1)(a) or (b) CTMR,

 earlier well-known marks invoked under Article 8(2)(c) CTMR, if they are registered in the Community,

 earlier marks under Article 8(3) CTMR if they are registered,

 earlier marks 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 found in enclosed documents. If these elements are missing the opponent must be notified of the deficiency.

2.4.2.2 Representation of earlier marks/signs

Rule 15(2)(e) and Rules 80(2) and 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 applications or registrations invoked under Article 8(1)(a) or (b) CTMR,

 earlier well-known marks invoked under Article 8(2)(c) CTMR, if they are registered in the Community,

 earlier marks with a reputation invoked under Article 8(5) CTMR,

 marks filed by an agent (Article 8(3) CTMR, if they are registered marks).

If a proper representation of the mark/sign has not been enclosed in the opposition notice, the opponent will 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, no representation is requested since it is available in the Office’s databases.

If the mark is a word mark, an indication of the word is sufficient to consider that a proper representation of the mark has been submitted.

For the same purpose, if the mark is figurative, 3-D, other mark, etc., the representation of the mark as applied for or registered must be filed. When the trade mark is in colour, at least a representation of the mark in colour must be submitted.

An earlier mark will be identified as a trade mark in colour only when a representation of the mark in colour is enclosed, or an indication in this regard is mentioned in the opposition notice or in the documents attached to it. Therefore, when an indication in this regard is contained in the submitted documents without it being accompanied by a representation of the mark in colour (i.e. no graphical representation of the mark or a representation of the mark in B&W is filed), the Office will notify this deficiency. If the opponent does not comply within the two-month time limit given, the earlier right will be rejected as inadmissible.

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 submitted in the original language.

The following countries have either always published in colour or have done so since the date indicated:

 Belgium  Bulgaria  Czech Republic (1999)  Denmark  Germany  Estonia (2003)  Ireland (2003)  Greece (2007)  Spain (as of 31/07/2002)

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 France (1992)  Croatia (2009)  Italy  Lithuania (as of July 2009)  Luxembourg  Hungary  Malta  Netherlands  Austria  Poland (2003)  Portugal (2006)  Romania  Slovenia (1992)  Slovakia (2008)  Finland (2005)  Sweden  United Kingdom (2004).

International marks have been published in colour since 1989.

If the representation on file is not clear, the Office may ask for a clearer one. If the representation that is received is incomplete or illegible and the request to provide a clear one is not complied with, the representation will be deemed 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 must 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 part of the goods and 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 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

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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 services on which the opposition is not based need not be indicated, as they are irrelevant to the proceedings.

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 translated 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 the 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’.

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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 EU

For admissibility purposes, with regard to oppositions filed against international registrations designating the EU, 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 all or part of the goods and 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 reputation 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 Rule 1(1)(b) and Rule 15(2)(h)(i) CTMIR

The opponent can either be a natural 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 oppositions 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 whether 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) and (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.

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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 address in accordance with Rule 1(1)(b) CTMIR.

 If the notice of opposition is based on the grounds of Articles 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.

 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 right or registration in one of the Member States of the European Union, it is entitled to file an opposition, 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 earlier CTM and oppositions based on national trade mark registrations (or applications).

Oppositions 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 submitted 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 during the admissibility check. However, if the opponent mentions in the explanation of its opposition that it is the new owner (or 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 national registration or application may be entered 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 in order to be able to claim rights arising from the registration.

In some cases the opposition is filed by opponent A whereas, after a transfer of the earlier mark on which the opposition is based, the mark is owned by B. As A may still

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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 (e. g. evidence of the transfer or of the granting of a licence before the opposition was filed) has to be proved within the time limit for substantiation.

Multiple opponents

Rules 15(1) and 75(1) CTMIR Decision of 11/10/2000, R 0623/1999-1, 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 Company 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.

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Not acceptable

Earlier trade marks 1 2 3 4 5

Owners A A B B B

The opponents will have to be asked to indicate whether 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 asked 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.

Earlier trade marks 1 2 3 4 5

Owners A/B/C B/C A A A

The opponents will have to be asked to continue the opposition either as multiple opponents A, B and C based on the first and the 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 whether 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

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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 copy 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 submitted evidence of co- ownership of one earlier registered mark, the opponents will still be required to confirm the ownership of the other earlier rights. As at this stage of the opposition proceedings the opponents are not obliged to submit evidence of their earlier marks/rights, a statement confirming their capacity to file an opposition together will be considered sufficient for admissibility purposes.

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 business 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.

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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 common representative, the representative first named in the opposition notice will be considered to be the common representative.

However, if one of the opponents is obliged to appoint a representative (because he or she is from outside the European Union), this representative will be considered 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 will be the common representative of all these persons. If the person first named has not appointed a representative and one of those persons is obliged to appoint a representative and has done so, that representative will 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 opposition 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 representative acts before the Office, representatives must 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.

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2.4.2.7 Signature

Rules 80(3) and 82(3) CTMIR

A notice of opposition sent by fax or by mail must be signed by the opponent or, if it is submitted by a representative, by the representative.

A notice of opposition sent by electronic means need not be signed and it is sufficient that the name of the sender is indicated.

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 deficiency. 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 will 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 list these goods clearly. 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 broader term used in the contested specification (e.g. opposition

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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’.

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 properly identified and cannot be changed after expiry of the opposition period,

 the indication of the grounds of the opposition, e.g. ‘likelihood of confusion’,

 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, 17 and 18 CTMIR Decision EX-13-2 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 information purposes.

Once the opposition has been found admissible, the Office will send a notification to the parties informing them that the proceedings are deemed to commence two months after receipt of the communication. The notification will also set the time limit for the

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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 (e-communication, fax and post) 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 web page of the Office, notification is deemed 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.

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

Rule 17, Rule 18(1), Rule 19 and Rule 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 are 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 (EU:C:2012:649), the notification sent to the parties informing them that the opposition is admissible in accordance with Rule 18(1) 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.

The cooling-off period will be set to expire two months from the notification. The exact date of expiry is indicated in the Office’s notification. This date will always be two 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 total of 24 months 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

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submitted such facts, evidence or arguments together with the notice of opposition. Within the same time limit, the opponent must 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 completion of the file (see expressly Rule 20(6), second 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 opposition and it may be referred to by opponents as a checklist 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 time 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 given an additional 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 take the form of either 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

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be filed within one month of filing on the parties’ own initiative. 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 filed late or because the cooling-off period had 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 will 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 submit 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.

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4.2 Substantiation

Article 41 CTMR Rule 19, Rule 20(1) and Rule 79 CTMIR

Substantiation is defined by Rule 19(2) CTMIR and refers to the proof of existence, validity and scope of protection of the earlier mark(s) or right(s) as well as the proof of 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 not only to complete its file, that is, present all the evidence in support of its opposition, but also to prove the existence and validity of the earlier rights invoked and its entitlement to file the opposition. Where relevant for the opposition, the opponent must also submit evidence of reputation, enhanced distinctiveness or any other aspect affecting the scope of protection of its earlier right(s).

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 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 translated 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. Exceptions to this rule are all paper documents (such as loose sheets of evidence) up to and including A3 size. However, any other item of evidence (larger than A3 or not being paper, such as CDs, DVDs, USBs, product samples, etc.) that has been submitted to the Office by post or personal delivery must be accompanied by a second copy. If no copy 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 found admissible is not substantiated at the substantiation stage and there 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 Office’s database.

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4.2.2 Converted CTM(A)s

Article 112(1) CTMR

This section will deal only with specific aspects of conversion in opposition proceedings. For further information on conversion, see the Guidelines, Part E, Register Operations, Section 2, Conversion.

4.2.2.1 Opposition based on CTM(A) (to be) converted

National applications deriving from the conversion of an earlier CTM or CTM application are considered to come into existence as soon as a valid conversion request is submitted. Such rights will be properly substantiated under Rule 19(2) CTMIR if the opponent indicates the number of the CTM (or CTM application) under conversion and the countries for which it has requested the conversion.

4.2.2.2 Opposition based on CTM(A) that is subsequently converted

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 submitted, the proceedings can continue. This is because national trade mark registrations resulting from a conversion of a CTM application can constitute the basis of the opposition procedure originally made on the basis of that CTM application (decision of 15/07/2008, R 1313/2006-G, CARDIVA/CARDIMA).

In such a case 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 the national applications that 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 submitted by the opponent as soon as they become available.

4.2.3 Trade mark registrations or applications that are not CTMs

Rule 19 (2)(a)(i) and (ii) CTMIR

To substantiate an earlier trade mark application or registration 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.

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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, constitutes valid evidence. For further requirements relating to renewal certificates, see below.

If the opposition is based on an application, the opponent must submit 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 submit 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 a few differences between an application form and the 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).

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 online database extract reproduced on a separate sheet is also acceptable as long as it contains an official identification of the authority or database from which it originates. Extracts from commercial databases are not accepted, even if they reproduce exactly the same information as the official extracts. Examples of extracts that are not accepted are DEMAS, MARQUESA, COMPUSERVE, THOMSON, OLIVIA, PATLINK, SAEGIS or COMPUMARK.

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 the UKIPO website (for UK trade marks),

 S.A.R.A, UIBM on-line from the UIBM website and Telemaco from the Italian Chambers of Commerce (for Italian marks).

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As regards international registrations, the following databases are accepted (judgment of 26/11/2014, T-240/13, Alifoods, EU:T:2014:994) 1:

 ROMARIN (the ‘short’ version of the extract being sufficient as long as it contains all the necessary information, but the extended or long version of the WIPO extract being preferable as it contains all the individual indications for each designated country, including the Statement of Grant of Protection)

 TMview (as far as it contains all the relevant data, see above).

When the extract from an official database does not contain all the required information, the opponent must supplement it with other documents from an official source showing the missing information.

Examples

Extracts from SITADEX (Spanish Office official database) sometimes do not contain the list of goods and/or services; in such cases, the opponent must submit 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 reproduces the image on a separate page that, when printed or saved as 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 a Portuguese trade mark is concerned, 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 accurate translation into English. The same also applies to official extracts from other national offices that provide an English version of their extracts, such as in Slovenia.

1 The practice of the Office has been to accept printouts of the CTM-Online database for international registrations with EU designation This approach contravenes Rule 19(2)(a) CTMIR. No exception to this rule is provided in Title XIII of the CTMR. The current 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 will only apply to oppositions with a filing date before 01/07/2012.

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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 refused 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.

Countries Term of protection Starting point

Benelux (Belgium, Luxembourg, The Netherlands)

10 years Filing date

Bulgaria 10 years Filing date

Czech Republic 10 years Filing date

Denmark 10 years Registration date

Germany 10 years Filing date

Estonia 10 years Registration date

Ireland 10 years for TM registered since 01/07/1996(7/14 years renewal before that) Registration date = filing date

Greece 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

France 10 years Filing date

Croatia 10 years Filing date

Italy 10 years Filing date

Cyprus 7 years first term/14 years renewal Filing date = registration date

Latvia 10 years Filing date

Lithuania 10 years Filing date

Hungary 10 years Filing date

Malta 10 years Registration date = filing date

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Countries Term of protection Starting point

Austria 10 years Registration date

Poland 10 years Filing date

Portugal 10 years Registration date

Romania 10 years Filing date

Slovenia 10 years Filing date

Slovakia 10 years Filing date

Finland 10 years Registration date

Sweden 10 years Registration 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.

4.2.3.5 Verification of evidence

It must be verified that the claims submitted by the opponent within the three-month opposition period are reflected in the evidence submitted.

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 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;

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Where the earlier mark has been identified as being in colour during the three- month opposition period, there are two acceptable scenarios.

1) An official colour representation of the mark such as a registration certificate, renewal certificate, official extract, etc. is submitted that contains a reproduction of the mark in colour.

2) An official document is presented with the representation of the mark in black and white, together with a colour claim and a colour indication, both of which are translated into the language of the proceedings.

a. Where the national trade mark office does not provide a detailed colour claim identifying the colours, and instead says ‘Colours claimed’ (or similar wording), this is acceptable as long as this entry is translated into the language of the proceedings.

b. Where the national office (e.g. the Portuguese Trade Mark Office) does not provide any indication of a colour claim on its certificate or official extract, further official documents must be submitted to prove this claim (e.g. a copy of the publication of the mark in the bulletin).

However, the latter 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.).

Therefore, if the opponent has identified during the three-month opposition period that its figurative mark is in colour and has only submitted 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.

Likewise, if the opponent has provided no indication during the opposition period that the earlier mark is in colour (representation in colour, or colour claim), and has only submitted a colour representation to the Office in order to substantiate its opposition, the opposition based on that earlier right will be rejected as not substantiated in accordance with Rule 20(1) CTMIR.

 the goods and services covered [511];

 the expiry date of the registration (if given);

 the owner [731, 732];

 other entries 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.).

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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 renewal certificate or equivalent document in order to prove that the term of protection of the trade mark extends beyond the time limit or an extension thereof has been 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-month grace period under the Paris Convention.

When an earlier right on which the opposition is based reaches the end of protection after expiry of the time limit set by the Office to substantiate the opposition, the opposition is not automatically rejected in the absence of further communications or proof from the opponent. Rather a communication is issued to the opponent in which it is invited to submit evidence of renewal which is communicated to the applicant (judgment of 05/05/2015, T-715/13, Castello (fig.)/Castelló y Jaun S.A. (fig.) et al., EU:T:2015:256, § 68 and following).

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 are not alone sufficient to substantiate the earlier mark.

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 Rule 19(2) and Rule 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 Article (5) CTMR; 2. proprietors (only) for trade marks referred to in Article 8(3) CTMR; 3. proprietors of earlier rights referred to in Article 8(4) CTMR and persons

authorised under the relevant applicable national law.

Example

If the opponent is a corporation, the name of the corporation must be carefully compared with the name of the corporation that owns the prior trade mark. For instance 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 rejected as not substantiated, unless the opponent has provided evidence of the transfer and, if

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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 has merely changed its name.

If the opponent is a licensee of the trade mark proprietor, the extract of the registration will normally show when a licence has been registered. However, some Member States do not record licences in their registers. In all cases, it is up to 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 submitted to support such an authorisation: for example, any express authorisation on behalf of the trade mark proprietor, such as the licence 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 of showing its entitlement to file the opposition under the applicable national law.

According to Article 22 CTMR and Rules 33, 34 and 35 CTMIR, the Office registers and publishes licence agreements in respect of Community trade marks. If the earlier mark basis of the opposition subject to the licence agreement is a CTM, the opponent does not have to submit any evidence of the licence 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 licence agreement entitles it to act in defence of the mark if the licence 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 licences, see the Guidelines, Part E, Register Operations, Section 3, CTMs as Objects of Property, Chapter 2, Licences. It is not sufficient to prove the registration of the licence 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 6bis of the Paris Convention. Such a mark may be unregistered, but it may also be registered.

The opponent needs to demonstrate 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.

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.

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 considered under Article 8(2) and/or Article 8(5)

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CTMR. See also the Guidelines, Part C, Opposition, Section 5, Trade Marks with Reputation Article 8(5) CTMR.

4.2.4.2 Marks with reputation

Article 8(5) CTMR Rule 19(2)(c) CTMIR

An opposition under Article 8(5) CTMR is based on an earlier trade mark that has a reputation. See also the Guidelines, Part C, Opposition, Section 5, Trade Marks with Reputation Article 8(5) CTMR.

The earlier trade mark in these cases is a registered 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 demonstrate that the use of the mark that 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 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 copies of the registration and renewal certificates, etc. are 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 submit evidence that it use of its sign (earlier right, either registered or not) has been of more than local significance. Furthermore, it also needs to provide the wording of the provisions of the national law on which it bases its case and make out its case under this law. See in detail the Guidelines, Part C, Opposition, Section 4, Rights under Article 8(4) CTMR.

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 an agent or representative of the proprietor of a trade mark applies for its registration at the Office. The proprietor can oppose the application

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of the disloyal applicant. See also the Guidelines, Part C, Opposition, Section 3, Unauthorised Filing by Agents of the TM Proprietor (Article 8(3) CTMR).

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 either a registered 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 rejected immediately after expiry of the two-month substantiation time limit, without waiting for the applicant’s reply.

In no case is the Office required to inform the parties which facts or evidence could be or have not been submitted. This will be detailed in the final decision, which can be appealed.

4.3 Translation/changes of language 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 arguments submitted by the opponent and Rule 22(6) CTMIR for evidence of use (always submitted by the opponent) are examples of such a lex specialis.

4.3.1 Translations of evidence of trade mark registrations and of facts, evidence and arguments submitted by the opponent to complete its file

Rules 19(3) and (4), 20(1) and 98(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.

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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 submitted and translated within this time limit is taken into account. If no translation or an insufficient translation has been submitted, the opposition will be partially or entirely rejected as unfounded.

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 registration document, such as a registration certificate, even where such indications have been accepted for admissibility purposes. The translation has to be on a stand-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 contents 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.

Only irrelevant administrative indications (e.g. previous transfers of ownership that do not affect the opposition, administrative entries on fees, etc.) with no bearing on the case may be omitted from the translation (judgment of 29/09/2011, T-479/08, Shoe with two stripes, EU:T:2011:549).

Where the opposition is based on only some 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.

When the entire original document is in the language of the proceedings except for the list of goods and services, there will be no need to provide a complete translation following the structure of the original document. 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, or in documents attached thereto or submitted later within the time limit to substantiate the opposition. The same applies to extracts/certificates that make use of INID or national codes, where the only information that still needs to be translated into the language of the proceedings is the list of goods and services.

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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 unless serious doubts arise regarding the accuracy or content of the translation. Where the representative adds a declaration that the translation is true to the original, the Office will, in principle, not question this. The Office even accepts handwritten 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 depending on the applicant’s reaction 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 that 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) and (4), and 96(1) CTMIR

There is no special rule for translations of the applicant’s first reply 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 applicant’s first reply or the opponent’s reply to the applicant’s observations may be in any language of the Office.

It is to be noted that if the applicant’s first reply or the opponent’s counter reply is not in the language of proceedings but in one of the languages of the Office, the submission will not be taken into account unless the applicant or the opponent submits 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 one on their own initiative.

Example 1

The language of opposition is English and the applicant has until 26/06/2012 to submit observations in reply to the notice of opposition. If, on 20/06/2012, it submits its observations in reply to the opposition in German, it must file its translation by

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20/07/2012. If it then files the translation on or before 20/07/2012, both the original submission and the translation must be taken into account, notwithstanding that the original time limit for filing observations expired on 26/06/2012.

Example 2

The language of opposition is English and the applicant has until 26/06/2012 to submit observations in reply to the notice of opposition. If, on 18/05/2012, it submits its observations in reply to the opposition in German, it must file its translation by 18/06/2012. However, as its time limit only finishes on 26/06/2012, if it has not filed a translation by 18/06/2012, it can still validly file documents until 26/06/2012. 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

Rules 96(2) and 98(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 submitted in any official language of the Community, as Rule 96(2) CTMIR applies. This evidence concerns all documents, other than observations, submitted by the parties after the time limit for the opponent to complete its file.

Examples of this type of evidence are catalogues, magazine articles, decisions 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 automatically obliged to file a translation.

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 addressed, the Office requires a translation within a specified time limit.

Rule 98(2) will apply only if the Office requires a translation, with the effect that translations that are filed late must be disregarded; likewise the original for which a translation is late or missing must also be disregarded.

Together with the invitation to file a translation, the Office will draw the attention of the party concerned to the fact that it is up to that party to evaluate whether a complete translation of all the evidence submitted may be necessary. However, the documents in

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question will only be taken into account insofar as a translation is submitted or insofar 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 only those parts that are relevant for the opposition proceedings.

4.3.4 Proof of use

Rule 22(2) and (6) CTMIR

For proof of use, Rule 22(6) CTMIR is lex specialis as regards translations. If the evidence is submitted in an EU language that 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 Office’s discretion 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 specified 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 has the effect that the opposition must be rejected if (1) no proof of use is submitted within the time limit given, or (2) proof of use was submitted within the time limit 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 initiative submits a translation of this evidence into the language of the proceedings after the expiry of the time limit but before the time limit set for the applicant to submit 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.

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Rule 16(2) CTMIR sets forth the conditions under which such a change of language may occur. It requires that the opposition be filed in a language 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 translation of the notice of opposition in that language’. It has to do so within one month of expiry of the cooling-off period.

Where the translation is not filed or filed late, the language of the proceedings will 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 fax 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 receipt of the retransmission is deemed to be the date of receipt of the original communication.

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 web page 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.

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Each party to the proceedings must always have a right to defend itself. That means that it should have full access to all material submitted by the other party.

It follows that all material submitted 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 kept confidential inter partes, the sender should be informed that the documents cannot be kept confidential with respect to the other party to the proceedings.

To this end, a letter has to be sent, 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 and inform the Office accordingly.

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 within the time limit specified, 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.

4.4.4 References made to documents or items of evidence in other proceedings

Rule 79(a) and Rule 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 submitted in other proceedings, for instance to evidence of use that has already been submitted 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 number 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 items of evidence not having been filed in paper format up to and including A3 size and should this evidence not be available in the electronic file of the Office, in accordance with Rule 79a CTMIR the party concerned must submit by mail a second copy for

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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. Rules 19(4) and 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 sufficiently specific within a given 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 circumstances 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 aware that material submitted in other proceedings may have been destroyed five years after their receipt in accordance with Rule 91 CTMIR and Decision 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 submitted in other opposition proceedings has no effect.

4.5 Further exchanges

Rules 20(2), (4) and (6), 22(5), 96(2) and 98(2) CTMIR

The Office invites the applicant to file observations within the time limit set by it in accordance with Rule 20(2) CTMIR.

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 submitted 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 submit its counter reply if the Office considers it necessary. After this, the adversarial part of the proceedings is usually closed and the 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 of observations should be granted to the opponent.

Therefore, a further exchange of observations may only be granted where the opponent’s final observations are purely in reply to the applicant’s observations and are supported by evidence that 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

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opponent submits evidence to the contrary, the applicant may be granted a second chance to submit further observations. Nevertheless, this is not automatic as it depends on the 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, EU:C:2013:484, § 28-30). Additional evidence will be examined on a case-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 Collective Marks, and the Guidelines, Part B, Examination, Section 1, Proceedings.

Anybody can submit third party observations; even the opponent is entitled to do so. However, it should do so in a manner that leaves no doubt 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 (decision of 30/11/2004, R 0735/2000-2, 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 decision on the 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 suspended. 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

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admissibility of the opposition and, once the decision on admissibility has been notified, the opposition proceedings will be suspended.

For oppositions closed due to third party observations, the opposition fee will not be refunded, as such refund is not foreseen in the regulations (see Rule 18(5) CTMIR).

5 Termination of Proceedings

5.1 Friendly settlement

Article 42(4) CTMR 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.

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.

To this end it 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) and (4), 95(a) and 96(1) CTMIR

5.2.1 Restrictions and withdrawals of CTM applications

Article 43 CTMR Rule 18(5) CTMIR

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.

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Withdrawals and restrictions must be explicit and unconditional. Silence on the part of the CTM applicant during the proceedings will never be considered as a tacit withdrawal.

A conditional or ambiguous withdrawal or restriction will not be accepted and will 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 finds them similar, it will restrict the list of goods and services of the CTM application. In this case the restriction is not acceptable, and the applicant must be informed 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 restriction is partly acceptable and partly unacceptable (see the Guidelines, Part B, Section 3, Classification for further information on what constitutes an acceptable amendment), the Office will proceed with the restriction for the acceptable part and will inform the applicant of the part that cannot be accepted, giving a time limit of 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 new proposal for the unacceptable part of the restriction, which the Office can now accept, the restriction will be processed taking into account the date of filing of the first request for the restriction. On the other hand, if the applicant does not react, the restriction is only processed insofar as it is acceptable (judgment of 11/12/2014, C-31/14 P, Premeno, EU:C:2014:2436, § 43-51).

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 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 the 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.

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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 of 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.

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.

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 the proceedings are closed. The opponent is refunded the opposition fee.

No decision on costs will be taken.

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.

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 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.

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Examples

 The opponent does not reply within the time limit given to it but subsequently withdraws its opposition within the cooling-off period (which has been extended).

 The opponent responds by maintaining its opposition, but nevertheless withdraws the opposition still within the extended cooling-off period.

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 the parties will be notified. At the same time the restriction is forwarded to the opponent.

Unless the parties submit an agreement on costs, 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 any reply. If the opposition is maintained, the proceedings continue. If the opposition is withdrawn, the opposition proceedings are closed. If the opponent first maintains its opposition and then subsequently withdraws, this is treated as a withdrawal of the opposition in accordance with paragraph 5.2.2.2 below.

Unless the parties submit an agreement on costs, the Office will take a decision on costs. For information on the apportionment of costs, see paragraph 5.5.3 below.

5.2.1.4 Restrictions and withdrawals of CTM applications after a decision has been taken

Following the decision of the Grand Board of Appeal of 27/09/2006 in case R 0331/2006-G, Optima, the Office accepts withdrawals and restrictions 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 close the case. Confirmation of the withdrawal is sent to the parties (however, no decision on costs is included in this communication). The part on costs 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.

For further information, see the Guidelines, Part B, Examination, Section 1, Proceedings and the Guidelines, Part E, Register Operations, Section 2, Conversion.

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A CTM application cannot be withdrawn once a decision rejecting the CTM application in full has become final, i.e. after the two month period for appeal.

If the decision rejected the opposition, the application can be withdrawn or restricted at any time.

5.2.1.5 Language

Rule 95(a) CTMIR

During opposition proceedings a restriction may be submitted either in the first or the second language of the CTM application.

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 ask for a translation 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 explicit and unconditional. A conditional or ambiguous withdrawal will not be accepted and will 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 (for information about the consequences of the withdrawal of an opposition following a restriction of the CTM application, see paragraph 5.2.1 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. Unlike a withdrawal of the opposition following a restriction of the CTM application during the cooling-off period (see paragraph 5.2.1.2 above), 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 below.

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 close 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 costs 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 the application is sent to registration.

For further information on withdrawals during appeal proceedings, see the Guidelines, Part B, Examination, Section 1, Proceedings, paragraph 5.1.

5.2.2.4 Language

Rule 96(1) CTMIR

A withdrawal of the opposition must be in the language of the proceedings. Should the withdrawal be submitted in a language that is not the language of proceedings a translation must be filed within one month from the date of submission of the original document. 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 substance 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 proof of existence and validity has not been filed properly for any of the earlier rights invoked, the opposition is rejected as soon as the time limit given to the opponent to complete its file has expired.

However, if the existence and validity of at least one earlier right has been proven, the proceedings will continue normally, and the non-substantiated rights will 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 that 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 that has ceased to have effect cannot coexist anymore the opposition cannot be upheld to this extent. Such a decision would be unlawful (judgment of 13/09/2006, T-191/04, Metro, EU:T:2006:254, § 33-36).

Invalidation of any earlier right other than a CTM 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 not be able to proceed on the basis of that earlier right.

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. This is the case even if the mark is still within the grace period for renewal, if applicable. If the opponent does not submit the proof, the opposition will not be able to proceed on the basis of that earlier right.

Before the decision is taken, the Office may also check the documents on file to see whether the earlier right invoked is the subject of national post-registration proceedings. If so, the Office will invite the opponent to provide evidence of the final outcome of the national proceedings. If the opponent provides evidence showing that the national proceedings are still pending, the Office may suspend the opposition proceedings until a final decision has been taken in the proceedings that led to the suspension.

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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 above, Time of payment), the opposition fee, including any surcharge, must be refunded to the opponent.

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.

5.4.1.2 Refund after republication

If after republication of the CTM application in part A.2 of the Bulletin due to a mistake by the Office, a ‘first publication opponent’ wishes to withdraw its opposition as a consequence of the republication, the proceedings should be closed. As the Office made a mistake with the first publication, the opposition fee will 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.

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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 restriction 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 before 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 partial 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 withdrawal or a restriction of the CTM application.

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Therefore, if the proceedings end by an agreement that contains a mention of a 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 Rule 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 initiative 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 disclaimer (disclaims an element of the opposed CTM application as being non-distinctive), and if thereafter the opponent withdraws the opposition, the opposition fee will not be refunded as this situation is not contemplated in the CTMIR as a reason for refunding the opposition fee. The disclaimer does not constitute a restriction of the list of goods and services of the CTM application.

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.

If a decision on substance is taken, the decision on apportionment of costs is given at the end of 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 the Office about an agreement on costs.

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5.5.2 Cases in which a decision on costs is not taken

No decision on costs is taken for oppositions that are closed before or during the cooling-off period.

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 received 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 have reached an agreement on costs after the withdrawal/restriction, the decision already issued 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 that would be entitled 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 request 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 that terminates the proceedings, by withdrawing the CTM application (wholly or partially) or by withdrawing the opposition, will bear the fees incurred by the other party as well as all costs incurred by it that are essential to the proceedings.

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.

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A party that 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 (judgment of 28/04/2004, T-124/02 and T-156/02, Vitataste, EU:T:2004:116, § 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 restricted only 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 that 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 the 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 that are partially directed against the same goods and services of the contested trade mark, the decision in relation to the opposition that 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 in the final decision on the substance the decision on costs is taken according to the 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. 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.

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.

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5.5.4.4 The meaning of ‘bear one’s own costs’

The notion of costs comprises the opposition fee and the 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 party has a claim against 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 will 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

Rule 94(3) and (6) CTMIR

The amount to be reimbursed is always fixed in EUR, regardless of the currency in which the party had to pay its representative.

If the opponent wins, the opposition fee of EUR 350 will be reimbursed.

As regards representation costs, the amount is limited to EUR 300. This applies both to the opponent and the applicant, provided that they were represented in the opposition procedure by a professional representative within the meaning of Article 93(1) CTMR, irrespective of whether these costs have actually been incurred. If the winning party was represented at some stage of the proceedings by a professional representative, but is no longer represented at the time of taking the decision on costs, 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.

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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 the 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 the 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 bill or proof whatsoever is needed. The Office knows that the opposition fee was paid and, if 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; in that case the party concerned must also comply with the applicable requirements):

 admissibility  evidence.

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.

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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 incurred is sufficient. A fortiori, if a bill is presented, it suffices that it shows at least the reimbursable amount; 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 these make it plausible (rather than provide fully-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 (decision of 16/12/2004, R 0503/2001-4, BIOLACT/BIO).

6 Procedural Issues

6.1 Correction of mistakes

Article 43(2) CTMR Rule 53 CTMIR

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 43(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 43(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 intended than what is offered as the correction’.

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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 will correct the mistake or error 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 not affect the opposition, it will be published 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 republication. 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 republication, the proceedings should be closed and the opposition fee should be refunded (see paragraph 5.4.1.2 above).

6.2 Time limits

Rule 71(1), Rule 79 and Rules 80(3), 82(3) and 96(1) CTMIR

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

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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

The length of extendable time limits 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.

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.

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An extension will only be possible if the relevant request is filed and received before the expiry of the original term (order of 30/01/2014, C-324/13 P, Patricia Rocha, EU:C:2014:60). If a request for extension is received by the Office after the expiry of the time limit, it must be rejected.

As a general rule, the first request for an extension that is received in time will be considered appropriate and will be granted for a period of two months (or less if so requested). However, any subsequent request for an extension 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 why 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 within 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 within the control of the parties.

The request has to be filed by the party affected by the time limit. For example, if the applicant has to submit 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, consult the Guidelines, Part A, General Rules, Section 1, Means of Communication, Time Limits, paragraph 3.1.3.

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 days before the end of the time limit to file observations but 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 (order of 30/01/2014, C-324/13 P, Patricia Rocha, EU:C:2014:60), the party concerned will be granted at least one day, even if the request for extension arrived on the last day of this time limit.

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, assuring the Office that the other party agrees to the extension is not acceptable.

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6.3 Suspension

Rules 20(7) and 21(2) CTMIR

The Office can suspend opposition proceedings either ex officio, or at the request of either one or both parties.

According to Rule 20(7) CTMIR, 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 not 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 party opts out, the suspension will end 14 days 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 a time limit of two months. 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 is 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 the 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.

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 (including conversion).

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 The opposition is based on an application for registration for a geographical indication or designation of origin.

In addition, according to the CTMIR, the proceedings may be suspended 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 that require the

mark to be republished.  A transfer is pending on earlier CTMs/CTM applications or contested CTM

applications.  The representative withdraws.

It should be noted that there is no obligation 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 (i) applications or (ii) 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 decision is ready to be taken. 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 successful 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 taken into account in the decision on the opposition, the proceedings will be suspended and, in the case of a national application or an earlier national mark at risk, the opponent must be requested to provide information on the status of the application or registration. For earlier CTMs, the Office has this information at its disposal.

However, the Office may suspend the proceedings earlier 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 it is facing problems. In this case the outcome of the proceedings against the earlier mark must have some impact on the opposition. Therefore, the probable outcome of the opposition will be considered in order to decide on suspension — in particular, whether the final decision on the opposition cannot be issued without taking into account the earlier application or earlier registration. This will be the case if the circumstances of the case do not allow the Office to say that 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 opposition is to be rejected, either for

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formal or for substantive reasons, a suspension 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 an application but is not suspended because there is another earlier right (a registered trade mark) on the 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 official, it must clearly identify the proceedings leading to the suspension and it must indicate the relief sought. In particular, the evidence must be clear as to the possible consequences for the earlier right on which 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 information 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

Here are some examples where, according to the general practice indicated above, the situation apparently does not require suspension 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 the 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

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based on the CTM application and therefore 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 submits 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 facing problems:

 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

Except for under exceptional circumstances, such as where one opposition clearly leads to the rejection of the contested mark including all goods and services, the Office will not suspend the other proceedings.

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 are 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 that 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 BoA reverses the decision, the other proceedings will be resumed immediately, without having to wait for that decision to become final.

6.3.4 Procedural aspects

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 application for a national registration or a national/international registration that faces problems, the resumption of proceedings

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will always depend on the reaction of the parties, which 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 submit the evidence.

6.3.4.2 Resuming the proceedings

In all 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 months 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 earlier application has been registered or refused. If the decision taken in the national proceedings invalidates, revokes, or results in some other way in the extinguishment of the right, or transfers the opponent’s earlier right, the opposition is deemed 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 ongoing 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 that:

 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);

 the time limit for the applicant is now 15/05/2016 (two full months after the opponent’s time limit).

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6.4 Multiple oppositions

Rule 21 CTMIR

Multiple oppositions are when different oppositions are filed against the same CTM application.

In the 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, the practice is 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 in respect of 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.

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 analysed and, depending on the situation, a decision may be

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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 several oppositions will be successful against overlapping goods and services, first the decision eliminating most goods and services of the CTM application (the widest extent of the opposition) should be taken and the remaining oppositions suspended. Once the first decision is final, the opponents in the remaining oppositions must be consulted on whether they wish to maintain or withdraw their oppositions.

Assuming that the oppositions are maintained, the next ‘widest’ opposition is decided and the same process continues until all of the oppositions are dealt with.

When two oppositions are of the same extent, the general principles apply when taking the decisions.

In the example mentioned above under paragraph 6.4.1, the first decision should either be taken in opposition 3 or in opposition 4. Opposition 1 has no overlapping goods and services and can therefore be taken independently.

Suppose the first decision is taken in opposition 4, and the CTM application is rejected for Classes 14 and 25. In this case, oppositions 2 and 3 need 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 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 on the costs, a decision on costs will not be taken. Generally, the decision will be that 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 case 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 withdrawal 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 others 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. It depends on the outcome of the decisions and on the scope of the pending cases whether a decision may be taken in some oppositions 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 set 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. The oppositions must be at the same procedural stage.

When it is decided to join the oppositions it should be verified whether the opponents have the same representative. If not, they must be asked to appoint one single 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 single representative, the joinder must be undone and the oppositions 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 undone before the decision is taken, only one decision is taken.

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6.5 Change of parties (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 Office’s practice for 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 national 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 transfer 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 opposition is based on one earlier CTM only and this 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 transferred and it must submit 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 the 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 to the transfer of only one of a number of CTM registrations on which the opposition is based, as 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 all these marks are/have been transferred to the same new owner during the opposition proceedings, the situation is the same as for an opposition based on a single CTM, as described above.

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, with the result that there are two opponents. The new opponents will be treated 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 friendly settlement with the applicant, the opposition will be treated as partially withdrawn in respect of the earlier rights owned by this opponent.

If one of the joint 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.

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6.5.1.3 Transfer of earlier national registration

Opposition based on one national registration only

When an opposition is based on one earlier national registration only and this 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.

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 of transfer or any other evidence showing the agreement of the parties to the transfer/change of ownership.

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 the 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 a time limit within which to provide evidence of the transfer.

As there are different national practices, it is not always obligatory to submit a copy of the request to register the transfer with the national office. Nevertheless, in those Member States where there is a requirement for a transfer to have effect against third parties, the transfer must have been registered before a decision on the 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.

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 any more, the opposition has become unfounded, as the opponent is no longer the owner of the earlier right. The old 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.

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 to transfers of only one of a number of national registrations on which the opposition is based, as 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 situation is the same as for the transfer of a single mark upon which an opposition is based, as described above.

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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 an opponent, with the result that there are two opponents. The new opponents will be treated 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.

If one of the joint 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.

6.5.1.4 Opposition based on a combination of CTM registrations and national registrations

When an opposition 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 principles set out above apply mutatis mutandis.

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 when the original time limit has expired.

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 file against the new CTM application, since it is not possible to deal with one opposition against two separate CTM applications.

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However, 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 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 old CTM application Y for apparatus for locomotion by land and clothing, and new 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, a second fee for the new opposition created after the split of the CTM application is not required because, at the time of filing, the opposition was only directed against one CTM application.

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 applicant become the same person or entity, the opposition becomes devoid of any purpose and will 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 change of representative during opposition proceedings, the other party will have to be informed by sending it 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 or 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 will 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 where the opponent is the applicant/proprietor of an earlier CTM application/CTM). The uncertainty of the legal status of an opponent or its representative will 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 the event 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) and Rule 73(4) CTMIR

Rule 73(1)(b) CTMIR applies from the point in time from which the party to the proceedings is no longer entitled to dispose of the procedure, i.e. to dispose of its assets, until the point in time a liquidator or trustee is appointed who will then continue to represent the party under the law.

When the applicant is represented by a professional representative who does not resign, there is no need to interrupt the proceedings. The Office considers the applicant’s representative to be entitled 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.

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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.

 If the representative does so, the Office will continue to correspond with the trustee or liquidator. If there were time limits affecting the applicant that 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 the aim of resuming the proceedings. This is because, although the bankrupt applicant is not allowed to undertake binding legal acts, generally it still receives correspondence, or, if not, the correspondence 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 submitted, 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.

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 submit observations, a new time limit of two months starts again, not the ten days it had left at the moment of the interruption. For clarification, the letter sent by the Office informing the parties about the resumption will 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.

Article 92(2) CTMR Rule 73(1)(c) CTMIR

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 representative is appointed before the end of this period, the proceedings will be resumed by the Office. When resuming the proceedings, the Office will proceed as follows:

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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 refused if it does not appoint a representative within a specified time limit.

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.

Double Identity and Likelihood of Confusion – General Principles

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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

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Table of Contents

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

2 Article 8(1) CTMR....................................................................................... 4 2.1 Article 8(1)(a) CTMR – double identity ...................................................... 4 2.2 Article 8(1)(b) CTMR – likelihood of confusion ........................................4 2.3 Interrelation of Articles 8(1)(a) and 8(1)(b) CTMR.....................................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 ...........8

3.4.1 Fact and law – similarity of goods/services and of signs ............................... 8 3.4.2 Fact and law – evidence................................................................................. 9

4 Evaluation of the Factors Taken into Account for Establishing Likelihood of Confusion............................................................................ 9 4.1 The relevant point in time ............................................................................. 9 4.2 List of factors for assessing likelihood of confusion................................ 10

Annex I ............................................................................................................ 11

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1 Introduction

This chapter provides an introduction to and overview of the concepts of (i) double identity and (ii) likelihood of confusion that 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 double identity and likelihood of confusion are used to protect trade marks and, at the same time, to define their scope of protection. 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 the ‘Canon’ case 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 user by enabling him, without any possibility of confusion, to distinguish the product or service from others that have another origin (emphasis added).

(Judgment of 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 28).

The essential function of trade marks as indicating origin has been emphasised repeatedly and has become a precept of EU trade mark law (judgments of 18/06/2002, C-299/99, Remington, EU:C:2002:377, § 30; 06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 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. judgments of 16/11/2004, C-245/02, Budweiser, EU:C:2004:717, § 59; 25/01/2007, C-48/05, Opel, EU:C:2007:55, § 21) but addressed them directly in the ‘L’Oréal’ judgment, 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).

(Judgments of 18/06/2009, C-487/07, L’Oréal, EU:C:2009:378, § 58-59; 23/03/2010, C-236/08 – C-238/08, Google-Louis Vuitton, EU:C:2010:159, § 75-79).

In examining the concepts of double identity and likelihood of confusion, this chapter touches upon several themes that are explained comprehensively in the chapters of

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’) that for the purposes of interpretation are broadly comparable to Articles 8 and 9 CTMR.

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the Guidelines that follow. The Annex contains a summary of the key cases dealing with the core principles and concepts of likelihood of confusion.

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 double 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 earlier well-known marks (Article 8(2)(c) CTMR) 2.

2.1 Article 8(1)(a) CTMR – double 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 will 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 established from a direct comparison of the two conflicting signs and the goods/services in question 3. 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 to carry out an evaluation of likelihood of confusion, and the opposition will automatically be upheld.

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

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, Double Identity and Likelihood of Confusion, Chapter 2, Comparison of Goods and Services and Chapter 4, Comparison of Signs.

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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 earlier trade mark may successfully oppose a CTM application under Article 8(1)(b) only if there is a likelihood of confusion.

2.3 Interrelation of Articles 8(1)(a) and 8(1)(b) CTMR

Although the specific conditions under Articles 8(1)(a) and 8(1)(b) CTMR differ, they are related. Consequently, in oppositions dealing with Article 8(1) CTMR, if Article 8(1)(a) is the only ground claimed but identity between the signs and/or the goods/services cannot be established, the Office will still examine the case under Article 8(1)(b) CTMR that 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 the goods/services are similar or vice versa.

Likewise, an opposition based only on Article 8(1)(b) CTMR that meets the requirements of Article 8(1)(a) CTMR will be dealt with under the latter provision without any examination under Article 8(1)(b) CTMR.

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 definition 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 highly distinctive character, enjoy broader protection than marks with a less distinctive character’ (see paragraph 3.3 below).

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Finally, the concept of likelihood of confusion as developed by the Court must be regarded as a legal concept rather than a purely realistic reflection of consumer cognitive behaviour and purchasing habits (see paragraph 3.4 below).

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, EU:C:1997:528). The Directive’s equivalents of Article 8(1)(b) CTMR and the eighth 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 origin 4. 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 that 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 that:

... the risk that the public might believe that the goods and services 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 such 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

4The concept came from Benelux case-law and applied inter alia to non-reputed marks.

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subsidiary; the manufacturer in the case of products marketed by the distributor; the licensor in the case of products marketed by a licensee. 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 that the trade mark is intended to guarantee is the same: it is not defined by reference to the manufacturer but by reference to the point of control of manufacture.

(Judgment of 22/06/1994, C-9/93, Ideal Standard, EU:C:1994:261, § 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 in 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 confusion 5.

3.3 Likelihood of confusion and enhanced distinctiveness

The distinctiveness of the earlier trade mark has been held to be an important consideration for assessing likelihood of confusion. The main findings of the Court are:

 the more distinctive the earlier trade mark, the greater will be the likelihood of confusion (see Sabèl, para. 24);

 trade marks with a highly distinctive character enjoy broader protection than trade marks with a less distinctive character (see in this regard Canon, para. 18).

One consequence of these findings is that the enhanced distinctiveness of the earlier mark may be a decisive factor towards establishing a likelihood of confusion when the similarity between the signs and/or the goods and services is low (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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) CTMR, see the Guidelines Part C, Opposition, Section 5, Trade marks with reputation Article 8(5) CTMR.

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3.4 Likelihood of confusion: questions of fact and questions of law

The concept of likelihood of confusion is a legal concept rather than a mere factual evaluation of the rational judgments and emotional preferences that inform the consumer’s cognitive behaviour and purchasing habits. Therefore, assessment of likelihood of confusion depends on both legal questions and facts.

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, that is to say, 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 question of law. The Court 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 determining 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, for instance, ‘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 relevant 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.

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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. 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, 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 compared with medical implants, it is not up to the Office to answer the question of whether wear-resistant cast iron is actually used for 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 is irrelevant. It does not relieve the Office from analysing and deciding on these concepts. This is not contrary to Article 76(1) CTMR that 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 its own initiative, facts that are already notorious or well known or that may be learned from generally accessible sources, for example, that PICASSO will be recognised by EU consumers as a famous Spanish painter (judgments of 22/06/2004, T-185/02, Picaro, EU:T:2004:189; 12/01/2006, C-361/04 P, Picaro, EU:C:2006:25). 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

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 met on or before the filing date of the CTM application (or any priority date) and they 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.

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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 List of factors for assessing likelihood of confusion

The likelihood of confusion is assessed in the following steps, taking into account multiple factors:

- Comparison of goods and services - Relevant public and degree of attention - Comparison of signs - Distinctiveness of the earlier mark - Any other factors - Global assessment of likelihood of confusion

Each of the above factors have a dedicated chapter in the Guidelines.

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Annex I

General principles coming from case-law (these are not direct citations)

Judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528

- 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 (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, EU:C:1998:442

- 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).

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Judgment of 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323

- 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 who, 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, EU:C:2000:339

- 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 that are identical with, or similar to, those for which the trade mark is registered, a sign that 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, Thomson Life, EU:C:2005:594

- 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 (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................................................................................................ 6 1.1 Relevance ...................................................................................................6 1.2 Nice Classification: a starting point.......................................................... 7

1.2.1 Its nature as a classification tool..................................................................... 7 1.2.2 Its structure and methodology ........................................................................ 7 1.2.3 Conclusions to be drawn from the structure of the Nice Classification .......... 8 1.2.4 Changes in the classification of goods/services............................................. 8

1.3 The Similarity Tool (ETMDN) for the comparison of goods/services......9 1.4 Definition of goods and services (terminology) .......................................9

1.4.1 Goods ............................................................................................................. 9 1.4.2 Services ........................................................................................................ 10 1.4.3 Products........................................................................................................ 10

1.5 Determining the goods/services ............................................................. 10 1.5.1 The correct wording...................................................................................... 10

1.5.1.1 Community trade marks ............................................................................11 1.5.1.2 Earlier national marks and international registrations................................11

1.5.2 The relevant scope ....................................................................................... 11 1.5.3 The meaning of goods/services.................................................................... 13

1.6 Objective approach .................................................................................. 13 1.7 Statement of reasons ............................................................................... 14

2 Identity...................................................................................................... 14 2.1 General principles .................................................................................... 14 2.2 Identical terms or synonyms ................................................................... 15 2.3 Terms included in general indication or broad category....................... 16

2.3.1 The earlier mark includes the goods/services of the contested mark .......... 16 2.3.2 The contested mark includes the goods/services of the earlier mark .......... 16 2.4 Overlap ......................................................................................................... 18

2.5 Practice on the use of general indications of the class headings ........ 19

3 Similarity of Goods and Services........................................................... 20 3.1 General principles .................................................................................... 20

3.1.1 Similarity factors ........................................................................................... 20 3.1.2 Defining relevant factors............................................................................... 21

3.2 The specific similarity factors ................................................................. 22 3.2.1 Nature ........................................................................................................... 22

3.2.1.1 Indicative value of class headings and categories.....................................22 3.2.1.2 Features of the goods defining their nature ...............................................23 3.2.1.3 Nature of services .....................................................................................24 3.2.1.4 Nature of goods versus nature of services ................................................24

3.2.2 Intended purpose.......................................................................................... 24 3.2.3 Method of use ............................................................................................... 25 3.2.4 Complementarity .......................................................................................... 26

3.2.4.1 Use in combination: not complementary ...................................................27

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3.2.4.2 Ancillary goods/services: not complementary............................................28 3.2.4.3 Raw materials, parts, components and fittings: not complementary..........28

3.2.5 In competition ............................................................................................... 29 3.2.6 Distribution channel ...................................................................................... 29 3.2.7 Relevant public ............................................................................................. 30 3.2.8 Usual origin (producer/provider) ................................................................... 31

3.2.8.1 Features defining a common origin ...........................................................32

3.3 Relation between different factors .......................................................... 33 3.3.1 Interrelation of factors................................................................................... 33 3.3.2 Importance of each factor............................................................................. 34 3.3.3 Different types of comparisons: goods versus goods, services versus

services and goods versus services............................................................. 35 3.3.4 Degree of similarity....................................................................................... 35

Annex I ............................................................................................................ 37

1 Parts, components and fittings .............................................................. 37

2 Raw material and semi-processed goods ............................................. 37

3 Accessories ............................................................................................. 38

4 Installation, maintenance and repair services ...................................... 39

5 Advisory services.................................................................................... 39

6 Rental and leasing................................................................................... 40 6.1 Rental/leasing versus related services ................................................... 41 6.2 Rental/leasing versus goods ................................................................... 41

Annex II ........................................................................................................... 42

1 Chemicals, pharmaceuticals and cosmetics......................................... 42 1.1 Chemicals (Class 1) versus chemical products (Classes 3 and 5) ....... 42 1.2 Pharmaceuticals versus pharmaceuticals.............................................. 42 1.3 Pharmaceuticals versus dietetic substances adapted for medical

use............................................................................................................. 44 1.4 Pharmaceuticals versus cosmetics ........................................................ 44 1.5 Pharmaceuticals versus services ........................................................... 44

2 Automobile industry................................................................................ 44

3 Electric apparatus/instruments .............................................................. 45

4 Fashion and textile industries ................................................................ 45 4.1 Raw or semi-processed materials versus finished goods .................... 45 4.2 Textile goods (Class 24) versus clothing (Class 25).............................. 46 4.3 Clothing, footwear and headgear (Class 25) .......................................... 46

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4.4 Fashion accessories ................................................................................ 46 4.5 Sports clothing, footwear and headgear (Class 25) versus sporting

and gymnastic articles (Class 28) ........................................................... 47 4.6 Fashion design (Class 42) and tailoring services (Class 40) versus

clothing (Class 25).................................................................................... 48

5 Food, beverages and restaurant services ............................................. 48 5.1 Ingredients of prepared food................................................................... 48 5.2 Main ingredient......................................................................................... 48 5.3 Non-alcoholic beverages (Class 32) versus alcoholic beverages

(except beers) (Class 33) ......................................................................... 49 5.4 Beers (Class 32), alcoholic beverages (except beers) (Class 33) ......... 49 5.5 Provision of food and drinks versus food and drinks ........................... 49

6 Services to support other businesses................................................... 50

7 Retail services ......................................................................................... 52 7.1 Retail services versus any product: dissimilar ...................................... 53 7.2 Retail services of specific goods versus same specific goods:

similar to a low degree............................................................................. 53 7.3 Retail services of specific goods versus different or similar specific

goods: dissimilar...................................................................................... 54 7.4 Retail services versus retail services or retail services of specific

goods: identical........................................................................................ 54 7.5 Retail services of specific goods versus retail services of other

specific goods: similar............................................................................. 54 7.6 Services to which the same principles apply ......................................... 54 7.7 Services to which the same principles do not apply ............................. 54

8 Financial services.................................................................................... 55 8.1 Banking services (Class 36) versus insurance services (Class 36)...... 55 8.2 Real estate affairs (Class 36) versus financial affairs (Class 36) .......... 56 8.3 Credit cards (Class 9) versus financial services (Class 36) .................. 56

9 Transport, packaging and storage......................................................... 57 9.1 Transport of goods (Class 39) versus any product ............................... 57 9.2 Packaging and storage of goods (Class 39) versus any product ......... 57

10 Information Technology.......................................................................... 57 10.1 Computers versus software .................................................................... 57 10.2 Software versus apparatus that use software........................................ 58 10.3 Software, downloadable ‘apps’ and downloadable electronic

publications .............................................................................................. 58

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10.4 Specific software versus specific software ............................................ 59 10.5 Computers and software (Class 9) versus computer programming

(Class 42) .................................................................................................. 59 10.6 Apparatus for recording, transmission, reproduction of sound or

images, computers and software (Class 9) versus telecommunication services (Class 38) .................................................. 59

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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 decision 1.

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 goods/services as registered. In particular, it is important to determine whether the goods and services for which the mark has been used belong to the category of goods and services for which the trade mark was registered. This is because, under Article 42(2) CTMR, proof of use for a good or service that is merely similar to the good or service registered does not prove use for the registered good or service (see the Guidelines, Part C, Opposition, Section 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 to examine whether the enhanced distinctiveness covers goods/services for which the earlier trade mark enjoys protection and which are relevant for the specific case, that is to say, which have been considered to be identical or similar to the goods/services of the contested CTM (see the Guidelines, Part C, Opposition, Section 2: Identity and Likelihood of Confusion, Chapter 4, Distinctiveness).

Furthermore, the outcome of the comparison of goods/services plays an important role for defining the part of the public for whom likelihood of confusion is analysed because the relevant public is that of the goods/services found to be identical or similar (see the Guidelines, Part C, Opposition, Section 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, Part C, Opposition, Section 3, Unauthorised Filing by Agents of the TM Proprietor – 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, Part C, Opposition, Section 4: Rights under Article 8(4) CTMR). Furthermore, under Article 8(5) CTMR the degree of similarity or dissimilarity between the goods or services is a factor that must be taken into account when establishing whether or not the consumer will perceive a link between the marks. For example, the goods or services may be so manifestly dissimilar that use of the later mark on the contested goods or services is unlikely to bring the earlier mark to the

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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mind of the relevant public (see the Guidelines, Part C, Opposition, Section 5, Trade Marks with Reputation (Article 8(5) 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.

1.2.1 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.

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).

The fact that two specific goods/services fall under the same general indication of a class heading does not per se make them similar, let alone identical: cars and bicycles – although both fall under vehicles in Class 12 – are considered dissimilar.

Furthermore, goods/services listed in different classes are not necessarily considered dissimilar (judgment of 16/12/2008, T-259/06, Manso de Velasco, EU:T:2008:575, § 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:

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 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 that are either cleaning preparations or for personal hygiene or beautification. Although they can by their nature also be classified as chemical products, it is their specific purpose that allows a distinction and thus a different classification.

 Equally, it is because of their nature that most items made of leather are classified in Class 18, whereas clothing made of leather falls under Class 25 since it serves a very specific purpose, namely for wear by people and as protection from the elements.

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 consist of only one general indication that 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 that include another general indication and are thus identical.

Example: materials for dressing in Class 5 include plasters in Class 5.

Other specific indications in a class heading are only mentioned to clarify that they do not belong to another class.

Example: Adhesives used in industry are included in chemicals used in industry in Class 1. Its reference is mainly thought to distinguish them from adhesives classified in Class 16, which are for stationery or household purposes.

To conclude: 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 their comparison.

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 the transfer of goods/services between various classes) or in the wording of headings. In such cases the list of goods/services of both the earlier and the contested mark must be interpreted according to the edition of the Nice Classification at its moment of filing.

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Example

 Legal services were transferred from Class 42 to Class 45 with the eighth edition of the Nice Classification. The nature of these services has not changed.

Vending machines were transferred from Class 9 to 7 with the 10th edition of the Nice Classification, since a vending machine is basically a powered machine and as such was considered more appropriately classified in Class 7 with other machinery. However, since the nature of these goods has not changed, vending machines classified in different classes due to different filing dates of the respective applications are regarded as identical.

1.3 The Similarity Tool (ETMDN) for the comparison of goods/services

The Similarity Tool for the comparison of goods and services is a search tool to help and support examiners in assessing the similarity of goods and services. The Similarity Tool serves to harmonise practice on the assessment of similarity of goods and services and to guarantee coherence of opposition decisions. The Similarity Tool must be followed by examiners.

The Similarity Tool is based on the comparison of specific pairs of goods and services. A ‘pair’ compares two ‘terms’. A ‘term’ consists of a class number from the Nice Classification (1-45) and a textual element, that is to say, a specific good or service (including general categories of goods and services, such as ‘clothing’ or ‘education’). There are five possible results of the search: identity, high degree of similarity, similarity, low degree of similarity and dissimilarity. For each of the degrees of similarity, the tool indicates which criteria lead to each result.

The Similarity Tool is constantly updated and if necessary revised in order to create a comprehensive and reliable source of reference.

Since the tool 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 CTMR does not give a definition of 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, the word ‘goods’ refers to any kind of item that 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 containers 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 as opposed to services, which are intangible. The definition and thus the scope of protection are particularly relevant when it comes to ‘goods’ such as

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‘electricity’, which are intangible. This question is already answered during the examination on classification and will usually not cause any problems 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. In contrast to goods, a service is always intangible.

Importantly, services comprise economic activities provided to third parties.

 Advertising one’s own goods is not a service but running an advertisement agency (designing advertisement campaigns for third parties) is. Similarly shop window dressing is only a service when provided for third parties, not when done in one’s own shop.

 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. For more detailed information, see Annex II, paragraph 7, Retail services.

One indication for an activity to be considered a service under trade mark law is its independent economic value, that is to say, that it is usually provided in exchange for some form of (monetary) compensation. Otherwise, it could be a mere ancillary activity provided together with or after the purchase of a specific good.

Example

 Delivery, including the transport of furniture that has previously been purchased (either in a physical establishment or online), is not an independent 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’ (judgment of 09/12/2008, C-442/07, Radetzky, EU:C:2008:696, § 16-18). It is more a question of whether the service has an independent market area and targeted public rather than the way or form in which compensation is 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 terms in common parlance are described as ‘products’ is immaterial for them being classified as goods or services.

1.5 Determining the goods/services

1.5.1 The correct wording

As a preliminary matter, the correct wording of the lists of goods/services under consideration must be identified.

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1.5.1.1 Community trade marks

An application for a CTM will be published in all the official languages of the Community (Article 120(1) CTMR). Likewise, all entries in the Register of CTMs will be in all these languages (Article 120(2) CTMR). Both applications and entries in the Register are published in the CTM 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 CTM Bulletin, and

 the original wording as filed.

In cases of such a discrepancy, the definitive version of the list of goods and services is:

 the text in the first language if the first language is one of the five languages of the Office.

 the text in the second language indicated by the applicant (see Article 120(3) CTMR) if the first language of the application is not one of the five languages of the Office.

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, second 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 in principle not question this. The other party may, however, question the correctness of the translation during the adversarial part of the proceedings. (See the Guidelines, Part C, Opposition, Section 1, Procedural Matters).

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 as for earlier national marks.

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/services. Any actual or intended use not stipulated in the

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list of goods/services is not relevant for the comparison since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (judgment of 16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 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 listed, 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 the Guidelines, Part C, Opposition, Section 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/services was filed), or

 on which the opposition is not, or is no longer, based.

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/services of the application, or the goods/services on which the opposition is based, or of both, will limit the goods and services to be compared.

Furthermore, an analysis of the wording of the list of goods/services might be required to determine the scope of protection of those goods and services. 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 the reference in judgment of 09/04/2003, T-224/01, Nu-tride, EU:T:2003:107).

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 semicolon 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. See the Guidelines, Part B, Examination, Section 3, Classification for more information on punctuation in lists of goods and services.

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For example, in ‘computer software for use with industrial machines; fire extinguishers’ in Class 9, the inclusion of a semicolon 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 more 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 interpreted 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 they have under the Nice Classification prevails.

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 separate 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-115/02, ‘a’ in a black ellipse, EU:T:2004:234, § 26).

However, that does not mean that two general indications of one class 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.

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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 determined on an 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 constantly changing. For instance, mobile phones nowadays combine many functions such as being communication tools as well as photographic apparatus.

The degree of similarity of the goods and services is a matter of law, which must be assessed ex officio by the Office even if the parties do not comment on it 2. However, the Office’s ex officio examination is restricted to well-known facts, that is to say, ‘facts that are already well known or which may be learned from generally accessible sources’, which excludes facts of a highly technical nature (judgment of 03/07/2013, T-106/12, Alpharen, EU:T:2013:340, § 51). Consequently, what does not follow from the evidence/arguments submitted by the parties or is not commonly known should not be speculated on or extensively investigated ex officio (judgment of 09/02/2011, T-222/09, Alpharen, EU:T:2011:36, § 31-32). This follows from Article 76(1) CTMR, according to which, in opposition proceedings, the Office is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought. (See also the Guidelines, Part C, Opposition, Section 2, Double Identity and Likelihood of Confusion, Chapter 1, General Principles).

1.7 Statement of reasons

The examiner is required to reason the outcome of the comparison (identity, similarity or dissimilarity) for each of the individual goods and services specified in the application for registration. However, the examiner may use only general reasoning for groups of the goods or services concerned as long as the goods or services present analogous characteristics (see by analogy order of 18/03/2010, C-282/09 P, P@yweb card / Payweb card, EU:C:2010:153, § 37-38, judgments of 12/04/2011, T-28/10, Euro automatic payment, EU:T:2011:158, § 54; 17/10/2013, C-597/12 P, Zebexir, EU:C:2013:672, § 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 exists not only when the goods and services completely coincide (the same terms or synonyms are used), but also when and insofar as the contested mark’s goods/services fall within the broader category of the earlier mark, or when and insofar

2 Judgment of 16/01/2007, T-53/05, Calvo, EU:T:2007:7, § 59.

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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 paragraph 3.1.1 below).

2.2 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 interpreted 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 refers to individual objects that 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.

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 to a revision of the Nice Classification or where it is clear that the goods/services are wrongly ‘classified’ due to an obvious mistake.

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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 Terms included in general indication or broad category

2.3.1 The earlier mark includes the goods/services of the contested mark

Where the list of goods/services of the earlier right includes a general indication or a broad category that covers the goods/services of the contested mark in their entirety, the goods/services will be identical (judgment of 17/01/2012, T-522/10, Hell, EU:T:2012:9, § 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.

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 general indication or broad category used in the contested mark, these goods/services must be

Earlier mark

Contested mark

Earlier mark

Contested mark

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considered identical since the Office cannot dissect ex officio the broad category of the applicant’s/holder’s goods/services (judgment of 07/09/2006, T-133/05, Pam-Pim’s Baby-Prop, EU:T:2006:247, § 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 (judgment of 24/05/2011, T-161/10, E- Plex, EU:T:2011:244, § 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 that fall under that general indication or broad term/category, 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 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 that are not listed independently but only as examples, the comparison differs insofar 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.

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Where the list of goods and/or services of the contested mark reads: vehicles, namely bicycles, aircraft, trains, the comparison differs insofar as only the specific items have to be compared. In this case only the contested bicycles are identical to the earlier goods.

2.4 Overlap

If two categories of goods/services coincide partially (‘overlap’) there might be identity if:

a. they are classified in the same class; b. 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

3 Seats for land vehicles

Bread Long-life bakery products. Long-life bread

Electric kitchen utensils Thermometers 4 Electric kitchen thermometers

Soap Cleaning preparations Soaps for cleaning purposes

Scientific instruments Optical instruments Scientific optical instruments, e.g.microscopes

Online banking services Commercial bankingservices Online commercial banking services

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 fifth 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.

3 Judgment of 09/09/2008, T-363/06, Magic seat, EU:T:2008:319, § 22. 4 Judgment of 19/01/2011, T-336/09, Topcom, EU:T:2011:10, § 34.

Earlier mark Contested mark

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2.5 Practice on the use of general indications of the 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 5.

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 CTMs registered and applications filed before the entry into force of the above Communication 6 that 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 of 31/01/2013, T-66/11 Babilu, EU:T:2013:48, § 49-50, the General Court confirmed this interpretation of the scope of protection of earlier CTMs.

 CTMs applied for 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 the requirements of clarity and precision) will be interpreted following a literal approach.

OHIM and all national trade mark offices of the European Union issued a Common Communication on the implementation of the ‘IP Translator’ judgment (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 ‘IP Translator’ judgment: In principle, OHIM accepts the filing practice of all national trade mark offices in the European Union. National trade marks filed before the ‘IP Translator’ judgment have the scope of protection awarded by the national office(s). 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.

5 See in this respect ‘Common Communication on the Common practice on the General Indications of the Nice Class headings’). 6 This Communication entered into force on 21/06/2012.

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 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 abovementioned principles have to be applied. Only those goods or services deemed to be covered following these principles will be considered 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 does not depend on any specific number of criteria that could be determined in advance and applied in all cases.

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, EU:C:1998:442). 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’], 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. 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.

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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 characterise the goods/services that are to be compared. Therefore, the relevance of a particular factor depends on the respective goods/services to be compared.

Example

 When comparing skis and ski-boots it is evident that they do not coincide in their nature or 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 characterising a product 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?

If the factors cannot already be defined 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 the basis of the definition from the dictionary alone, it would lead to an erroneous 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

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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 ‘Relation between different factors’ below).

3.2 The specific similarity factors

The following paragraphs define and illustrate the various factors for similarity of goods and services.

3.2.1 Nature

Nature of a product/service can be defined as the essential qualities or characteristics by which this product/service is recognised. Nature often corresponds to a particular type or sort of product/service or a specific category to which this product/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.

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 compared fall under a sufficiently narrow general indication of a class heading favours an identical or similar nature.

Example

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sub-category of foodstuffs (judgment of 4/11/2003, T-85/02, Castillo, EU:T:2003:288, § 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 for defining 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 ones, with the same functioning principle have a different nature.

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

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The physical condition is another feature of the goods that may be used 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 liquid 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 that 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 or merchandise. Their sale usually entails the transfer in title of something physical. Services, on the other hand, consist of the provision of intangible activities.

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.