22 March 2018 – an advertising slogan is distinctive only if it can immediately be perceived as an indication of the commercial origin of the goods or services in question – Judgement of the Court of Justice of the EU (General Court), case T 235/17

22 March 2018 – an advertising slogan is distinctive only if it can immediately be perceived as an indication of the commercial origin of the goods or services in question – Judgement of the Court of Justice of the EU (General Court), case T 235/17

The applicant had filed an application for registration of an EU trade mark for the word sign MOBILE LIVING MADE EASY for goods and services in Classes 5 to 7, 9, 11, 12, 19 to 22 and 37 of the Nice Agreement. The EUIPO examiner rejected the application on the ground that it was devoid of any distinctive character. The applicant filed a notice of appeal with EUIPO and the Board of Appeal of EUIPO dismissed the appeal holding that the sign was devoid of any distinctive character, because the relevant public would perceive the expression ‘mobile living made easy’ as a promotional laudatory message which serves to highlight positive aspects of the goods and services concerned, namely that they make it easy to have a mobile, travelling life, and not as an indication of their commercial origin.

The General Court held that, in order to determine whether the goods and services covered by an application to register an EU trade mark are interlinked in a sufficiently direct and specific way and can be placed in sufficiently homogenous categories or groups, account must be taken of the fact that the objective of that exercise is to enable and facilitate the assessment in concreto of the question whether or not the mark concerned by the application for registration is caught by one of the absolute grounds for refusal. By recalling the Case Law of the Court of Justice of the EU, the General Court further held that the placement of the goods and services at issue in one or more groups or categories must be carried out in particular on the basis of the characteristics which are common to them and which are relevant to the analysis of whether or not a specific absolute ground for refusal may apply to the mark applied for in respect of those goods and services.

Also, it must be examined whether or not, in the light of the meaning of the word element of the mark applied for, the goods and services covered by the mark at issue constitute a homogenous group justifying recourse to general reasoning.

The General Court still recalled the Case Law of the Court of Justice of the EU stating that, despite their differences, all the goods and services at issue could have a common characteristic, relevant to the analysis that the Board of Appeal had to carry out, which could justify their placement within a single homogenous group and the use by the Board of Appeal of general reasoning in relation to them.

In the present case, the General Court held that it is apparent from the contested decision that the Board of Appeal found that the goods and services referred to in the application for registration belonged to a homogenous category in the light of a common characteristic defined by reference to the meaning of the sign applied for, namely ‘which facilitates mobile life’. In that regard, ‘[a]lthough the goods in the various classes have very different specific characteristics, they form[ed] one homogenous category concerning a general, but essential or desirable, feature for those who are moving around in e.g. their vehicles by land or water, namely, one way or another, the goods facilitate[d] mobile life (by providing means for the specific purposes of personal hygiene, safety, security, energy, cooking, preserving food and drink, thermal comfort or comfort in general)’.

The General Court acknowledged that the Board of Appeal thus took into account that the application to register covered goods and services with different characteristics. However, it took the view that those goods and services also had a general characteristic in common of facilitating mobile life.

Moreover, the General Court stated that the Board of Appeal pointed out that the services in Class 37 referred to in the application for registration related to recreational vehicles, motorhomes, caravans, yachts and boats, passenger vehicles, vans and trucks that could serve as permanent or temporary accommodation for professional or leisure purposes and that the goods in question could be installed or used in those vehicles. Consequently, goods which are installed or used in such vehicles must be considered to be goods which facilitate mobile life in one way or another.

Thus, the General Court held that the Board of Appeal was right in finding that the goods and services in question form a homogenous category, in that they facilitate mobile life in one way or another.

By recalling the Case Law of the Court of Justice of the EU, the General Court stated that registration of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use. However, a mark which, like an advertising slogan, fulfils functions other than that of a trade mark in the traditional sense of the term is distinctive only if it can immediately be perceived as an indication of the commercial origin of the goods or services in question and accordingly enables the relevant public to distinguish, without any possibility of confusion, the goods or services of the proprietor of the mark from those which have a different commercial origin.For a finding of no distinctive character, it is sufficient that the semantic content of the word mark in question indicates to the consumer a characteristic of the product or service relating to its market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive at first glance as such, rather than as an indication of the commercial origin of the product or service in question.

Hence, the General Court shared the view of the Board of Appeal that the sign did not contain any unusual variation of the English rules of syntax and grammar and that advertising slogans, such as that in the present case, were often written in a simplified form, so as to make them more concise and snappier. The mark applied for, taken as a whole in relation to the goods and services in question, sent a clear and unequivocal message, which was immediately apparent and did not require any interpretative effort on the part of the relevant English-speaking public. Thus, the relevant public would perceive the expression ‘mobile living made easy’ as a promotional laudatory message, the function of which was to communicate an inspirational message of quality and that it would not perceive in the sign applied for any particular indication of commercial origin beyond the promotional information conveyed, which merely served to highlight positive aspects of the goods and services in question, namely that they made it easy to have a mobile, travelling life. In that regard, the relevant public is the English-speaking public, and the meaning of the sign applied for does not depart from everyday language in such a way that the relevant public will recognise in it more that the mere juxtaposition of the expressions ‘mobile living’ and ‘made easy’, and the relevant public will understand that sign as meaning ‘which facilitates mobile life’. That meaning is so obvious that that public does not need to think in order immediately to understand it.

Thus, the General Court shared the view of the Board of Appeal that the sign applied for will not therefore be perceived by the relevant public as an indication of the origin of the goods and services in question, but as an advertising slogan. Furthermore, the sign applied for does not include any unusual element capable of conferring distinctive character on that sign.

Therefore, the General Court confirmed the decision of the Board of Appeal holding that that sign does not include any elements that might, beyond its promotional meaning, enable the relevant public to memorise it easily and instantly as a trade mark for the goods and services in question.

Full judgement

13 March 2018 – EU figurative mark including a juxtaposition of two English words compared with an earlier EU word mark – Judgement of the Court of Justice of the EU (General Court), case T 346/17

13 March 2018 – EU figurative mark including a juxtaposition of two English words compared with an earlier EU word mark – Judgement of the Court of Justice of the EU (General Court), case T 346/17

The judgement relates to an action against a decision of the Board of Appeal of EUIPO relating to opposition proceedings concerning an application for registration of an EU trade mark sought for a figurative sign the dominant element of which is the result of a juxtaposition of two English words (‘guidego’), where the opposition was grounded on an earlier similar EU word mark (‘GUIDIGO’) for services held in part identical and in part similar.

First of all, recalling the case law of the Court of Justice of the EU, the General Court stated that the assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark.

In this regard, the General Court acknowledged that the dominant element of the sign requested is the result of a juxtaposition of two English words and that the use of different colours makes it possible to perceive them.

However, with reference to the conceptual comparison of the signs, the General Court stated that the fact that consumers distinguish between the two words which make up the element ‘guidego’ does not mean that they will necessarily be able to understand them.

As regards the visual comparison, still recalling the case law of the Court of Justice of the EU, the General Court pointed out that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have a graphic form capable of creating a visual impression.

In the present case, the General Court held that the sign comprising the earlier mark and the dominant element of the mark applied for are similar to the extent that they coincide in six out of seven letters and differ only in the central vowel. Similarly, the degree of stylisation of the word element and the additional elements of the mark applied for do not counteract the similarities between the signs, as a result of which they are similar to an average degree.

That degree of similarity exists regardless of whether the element ‘guidego’ is perceived as two separate words or as a single element.

Also, the General Court held that there is a high degree of phonetic similarity in so far as the pronunciation of the elements ‘guidigo’ and ‘guidego’ is very similar.

Although the sign applied for included additional words written in much smaller typeface, recalling the case law of the Court of Justice of the EU, the General Court stated that they will probably not be spoken, and that it is also necessary to take into account the natural tendency of consumers to shorten long signs.

Moreover, the General Court held that, although the sign GUIDIGO is a fanciful term, whereas the element ‘guidego’ is a juxtaposition of two English words, nevertheless that fact is not sufficient to make it possible to consider that the difference in pronunciation of the two distinctive elements would be significant, at least as regards the non-English-speaking section of the relevant public.

In fact, even if the element ‘guidego’ is pronounced according to the rules of English pronunciation, whereas the GUIDIGO sign is pronounced according to the rules of pronunciation of the mother tongue of the consumer other than English, that possible difference is relevant only in respect of the part of the relevant public whose mother tongue is not English, but who does speak English.

Thus, even if all members of the general public of the European Union recognised the element ‘guidego’ as the juxtaposition of two English words, the General Court held that it cannot be argued that the whole of that public will pronounce that element according to the rules of English pronunciation.

In addition, recalling the case law of the Court of Justice of the EU, the General Court stated that it should be borne in mind that, as regards the phonetic comparison of the signs, it is necessary to disregard their meaning, as those considerations are relevant to the conceptual comparison.

Full judgement

13 March 2018 – EU figurative mark based on a letter of the alphabet – Judgement of the Court of Justice of the EU (General Court), case T 824/16

13 March 2018 – EU figurative mark based on a letter of the alphabet – Judgement of the Court of Justice of the EU (General Court), case T 824/16

The judgement relates to an action against a decision of the Board of Appeal of EUIPO relating to opposition proceedings concerning an international registration designating the European Union obtained for a figurative sign based on the letter “k”, where the opposition was grounded on four earlier national trade marks (registered with the Benelux Office for Intellectual Property) also based on the letter “k” for identical services.

With regard to the phonetic similarity, the General Court held that, since the relevant public may be led to recognise a letter ‘k’ in the mark applied for and in the earlier national trade mark, those two marks are likely to be pronounced in the same way. Consequently, it must be held that, contrary to what the Board of Appeal pointed out in that regard, the marks at issue are phonetically identical.

With regard to the conceptual similarity of two marks which consist of the same single letter, recalling the case law of the Court of Justice of the EU, the General Court stated that the graphic representation of a letter is likely to evoke a very distinct entity in the mind of the relevant public, namely a particular phoneme. In that sense, a letter refers to a concept.

It follows that there may be conceptual identity between signs where those signs refer to the same letter of the alphabet.

With regard to the global assessment of the likelihood of confusion, still recalling the case law of the Court of Justice of the EU, the General Court stated that it is true that the level of attention of the relevant public is an element which has to be taken into consideration in assessing whether there is a likelihood of confusion. However, it cannot be accepted that there are cases in which, owing to the level of attention displayed by the relevant public, any likelihood of confusion and therefore any possibility of applying that provision can, a priori, be ruled out.

The fact that the public in question will pay more attention to the identity of the producer or provider of the goods or services which it wishes to purchase does not, however, mean that it will examine the mark before it in the smallest detail or that it will compare it in minute detail to another mark. Even with regard to a public with a high level of attention, the fact remains that the members of the relevant public only rarely have the chance to compare the various marks directly and must therefore rely on their imperfect recollection of them.

The distinctive character of the earlier trade mark is also one of the relevant factors which may be taken into account in the global assessment of the likelihood of confusion. However, even if the degree of inherent distinctive character of an earlier mark were lower than average, such a weak distinctive character would not, in itself, preclude a finding that there is a likelihood of confusion.

In any event, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods and services covered.

Full judgement

10 March 2018 – Taking into account by the Board of Appeal of EUIPO of new evidence concerning genuine use of an earlier mark – Judgment of 28 February 2018 of the Court of Justice (First Chamber) of the EU, case C 418/16 P

10 March 2018 – Taking into account by the Board of Appeal of EUIPO of new evidence concerning genuine use of an earlier mark – Judgment of 28 February 2018 of the Court of Justice (First Chamber) of the EU, case C 418/16 P

The appeal originated from the following dispute.

The appellant filed two applications for EU trade marks with EUIPO concerning a word mark and a figurative mark, seeking registration in respect of goods and services in classes 9, 16, 35, 38 and 42 of the Nice Agreement. The figurative and word marks were registered.

Afterwards, the intervener at first instance filed two applications for a declaration of invalidity of the word mark and the figurative mark, based on an earlier national mark registered for services in classes 35 and 42 of the Nice Agreement (the earlier national mark was registered also for services in class 39).

Before the Cancellation Division of EUIPO, the appellant requested that the intervener at first instance provide proof of use of the earlier national mark in question. The Cancellation Division rejected the applications for a declaration of invalidity on the ground that that evidence was not adduced.

Seised of appeals brought by the intervener at first instance against those decisions, the Board of Appeal of EUIPO, after taking into account a series of additional elements of evidence produced for the first time in the appeal, found, in each of the contested decisions, that the intervener at first instance had proved genuine use of the earlier national mark for part of the services in Class 35 of the Nice Agreement. Accordingly, it annulled the decisions of the Cancellation Division and, since the latter did not examine the likelihood of confusion, it decided to refer the cases to that Division for examination of the applications for a declaration of invalidity.

 

The appellant brought two actions for annulment of the contested decisions. After having ordered the joinder of the two cases, the General Court, by the appealed judgment, dismissed those actions in their entirety.

In particular, the appellant submitted that, by holding that the Board of Appeal was entitled to take account of evidence of genuine use of the earlier national mark at issue produced for the first time before it, the General Court infringed the provisions of the Regulation 207/2009 (similar provisions are established also by Regulation 2017/1001 on the European Union trade mark, currently in force).

 

In the judgement of 28 February 2018, the Court of Justice (First Chamber) of the EU first recalled, consistently with its case law, that the Court is not bound either by the Advocate General’s Opinion or by the reasoning on which it is based. Consequently, a party’s disagreement with the Opinion of the Advocate General, irrespective of the questions that he examines in his Opinion, cannot in itself constitute grounds justifying the reopening of the oral part of the procedure. Thus, the Court held that, having heard the Advocate General, it had all the elements necessary to rule in the case and that those elements have been debated before it.

 

Then, the Court pointed out that, under Article 76(2) of Regulation 207/2009 (corresponding to Article 95(2) of Regulation 2017/1001 currently in force), EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.

In accordance with the settled case-law of the Court, it follows from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject and EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced out of time.

By stating that EUIPO ‘may’, in such a case, decide to disregard such evidence, that provision grants EUIPO broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account.

 

As regards the appeal procedure, the Court has recalled that it has already held that, for the purposes of the examination of the merits of the appeal brought before it, the Board of Appeal is not only to invite the parties, as often as necessary, to file, within time limits which it sets, observations on notifications which it has sent to them, but may also decide on measures of inquiry, including the production of facts or evidence. In turn, such provisions demonstrate the possibility of seeing the underlying facts of a dispute multiply at various stages of the proceedings before EUIPO.

Thus, consistently with its case law, the Court recalled that the Board of Appeal enjoys, when examining an appeal directed against a decision of the Opposition Division, the discretion to decide whether or not to take into account additional or supplementary facts and evidence which were not presented within the time limits set or specified by the Opposition Division.

However, it cannot be inferred therefrom, a contrario, that during the examination of an appeal against a decision of a Cancellation Division, the Board of Appeal does not have such discretion. Accordingly, the Court held that the General Court did not err in law in finding that the Board of Appeal is entitled, when examining an appeal directed against a decision of a Cancellation Division, to take into account additional evidence of genuine use of the earlier mark concerned not produced within the time limits set by that division.

In this regard, consistently with its case law, the Court also recalled that, in the context of invalidity proceedings, taking facts or evidence into account which have been produced out of time is particularly likely to be justified where EUIPO considers, firstly, that the material which has been produced late is, on the face of it, likely to be relevant to the outcome of the application for a declaration of invalidity brought before it and, secondly, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account.

Full judgement

4 September 2017 – EUIPO – EU trade mark reform package – Ready for October 1st?

4 September 2017 – EUIPO  - EU trade mark reform package – Ready for October 1st?

The graphical representation requirement will no longer apply when submitting a EU trade mark application as and from 1 October 2017: what you see is what you get!

No description is compulsory for filing any type of trade mark, rather electronic formats are required for the representation of trade marks, such as jpeg for figurative, position, colour and hologram trade marks, as well as mp3 for sound trade marks and mp4 for motion (video) and hologram trade marks.

Also, certification marks will be accepted, i.e. marks which are capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified.

Certification marks will indicate that the goods/services bearing the mark comply with a given standard set out in the regulations of use and controlled under the responsibility of the certification mark owner.To this end, the owner must file regulations of use of the certification mark containing the characteristics of the goods/services to be certified, the conditions governing the use of the certification mark, and the testing and supervision measures to be applied by the certification mark owner.

A certification mark cannot be owned by a person carrying out a business involving the supply of the goods/services of the kind certified: the owner can not even use the mark for the certified goods/services covered. – see EUIPO information

4 July 2017 – Application for an EU trade mark claimed as a “position mark” affixed to the side of a tyre – Judgement of the Court of Justice of the EU (General Court), case T 81/16

4 July 2017 – Application for an EU trade mark claimed as a “position mark” affixed to the side of a tyre – Judgement of the Court of Justice of the EU (General Court), case T 81/16

The judgement concerns an action against a decision of the Board of Appeal of EUIPO dismissing an appeal against the examiner’s decision to refuse the application for registration of a mark, on the ground that the trade mark sought was devoid of any distinctive character for the goods referred. Namely, in the application for registration, the mark at issue is described as “a pair of essentially equal curved strips positioned on the side of a tyre and running along its circumference. The trade mark in question is a position mark”, and the goods in respect of which registration was sought fall correspond to the following description: “Tyres, solid, semi-pneumatic and pneumatic tyres, rims and covers for vehicle wheels” (Class 12).

The applicant adduced new evidences for the first time before the General Court, both after the application was lodged and during the hearing, which were intended to support, in essence, the distinctive character of the mark applied for. The General Court confirmed that “facts not relied on by the parties before the adjudicatory bodies of EUIPO may not be relied on at the stage of the action before the General Court and that the General Court may not re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. Indeed, the legality of a decision of a Board of Appeal of EUIPO must be assessed in the light of the information available to it when it adopted that decision”. Consequently, such evidences were held by the General Court as inadmissible.

Also, the General Court set forth that, “even though the applicant has claimed protection for additional goods, namely, rims and covers for the wheels of vehicles, the sign for which registration is sought is necessarily limited to tyres, being affixed to these, and not to any other goods. This is a direct consequence of the nature of the mark applied for, namely, a “position mark” affixed to the side of a tyre”.

Furthermore, the General Court reaffirmed that, although a minimum degree of distinctive character is sufficient, provided that “the trade mark enables the relevant public to identify the origin of the goods or services which it covers and to distinguish them from those of other undertakings”, “nevertheless, a sign which is excessively simple and is constituted of a basic geometrical figure, such as a circle, a line, a rectangle or a conventional pentagon, is not, in itself, capable of conveying a message which consumers will be able to remember, with the result that they will not regard it as a trade mark unless it has acquired distinctive character through use”.

In the present case, “the goods at issue are directed both at the public at large and a professional public”, and “the level of attention cannot be considered as being particularly high”. ”In any event, the question whether the relevant public is characterised by a high or particularly high level of attention is irrelevant. Having regard to the elements composing the mark applied for, which are characterised by extreme simplicity, the mark does not convey a message related to the commercial origin of the goods covered, whatever the relevant public’s level of attention”.

In fact, the General Court endorsed the contested decision setting forth that the mark applied for “is extremely simple and does not display any particular characteristics or an aspect easily and immediately perceived by the relevant public as indicating the commercial origin of the goods at issue. Consequently, consumers will perceive the contested sign as a mere decorative element affixed to the sidewall of tyres or any other goods covered by the application for registration”. Furthermore, “in order for a trade mark to be registered it is not sufficient for it to be original, it must also differ substantially from the basic shapes of the goods concerned, commonly used in trade, and must not appear as a simple variant of those shapes”.

As to acquired distinctiveness through use, the General Court confirmed that “it is necessary that at least a significant proportion of the relevant public, by virtue of that mark, identifies the goods or services concerned as originating from a particular undertaking. However, the circumstances in which that requirement for acquisition of distinctive character through use may be regarded as satisfied cannot be established solely by reference to general, abstract data such as predetermined percentages”. In that regard, “the applicant merely states that it has supplied since 2011, exclusively, tyres for Formula 1 Championship teams and that, therefore, the mark applied for enjoys wide televised media coverage, accordingly it is seen by millions of viewers across the entire world”. Nevertheless, it is not sufficient, for the purposes of recognising acquired distinctiveness through use, “that a mark has been seen by many. It is also necessary for those persons to be capable of attributing to that mark a distinctive function. None of the evidence presented provides information relating to the way in which the relevant public understands the mark”. Thus, “none of the evidence submitted makes it possible to show that the relevant persons or, at least, a significant proportion of these, identify, thanks to the mark applied for, the goods covered by it. The evidence submitted merely makes it possible to show that the sign for which registration was sought was used by the applicant on those goods. Nevertheless, they do not make it possible to show that the sign will be perceived by the relevant public as an indication of commercial origin of the goods covered by the mark applied for”, and no acquired distinctive character through use, at the time the trade mark application was submitted, has been recognised by the General Court. – Full judgement

20 June 2017 – EU trade mark 

20 June 2017 – EU trade mark 

Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark, codifying Council Regulation (EC) 207/2009, has been published in the Official Journal of the European Union. Regulation (EU) 2017/1001 repeals Regulation (EC) 207/2009, and will apply from 1 October 2017. Article 31: next implementing acts will provide for electronic representation of trade marks. Articles 83-93 concern the specific provisions on EU certification marks.