"Would you care for a glass of CANNABIS, Sir?"

Drink and drugs were the main preoccupation of some of Europe's finest legal brains this morning, when the Court of First Instance rendered its decision in Case T‑234/06, Giampietro Torresan v Office for Harmonisation in the Internal Market, Klosterbrauerei Weissenohe GmbH & Co. KG, a decision which some of the IPKat's readers may feel to have been reached while under the influence of one or other of those popular commodities.

Over ten years ago, in February 1999, Giampietro Torresan applied to register as a Community trade mark the word CANNABIS for (i) ‘Beers’ (Class 32); (ii) ‘Wine, spirits, liqueurs, sparkling beverages, sparkling wine, champagne’ (Class 33) and (iii) ‘Providing of food and drink, restaurants, self-service restaurants, public houses, ice cream parlours, pizzerias’ (Class 42). The mark was registered in April 2003. Two months later, Klosterbrauerei applied for a declaration that the mark was invalid as regards the alcoholic beverages in Classes 32 and 33. The Cancellation Division agreed, concluding that CANNABIS was descriptive of the goods in question. In 2005 the Board of Appeal dismissed the appeal: in its view (i) the word ‘cannabis’ designated, in everyday language, either a textile plant or a narcotic substance and (ii) 'cannabis' was, for the average consumer, a clear and direct indication of the characteristics of goods in Classes 32 and 33.

The Court of First Instance dismissed Mr Torresan's appeal.

* It noted that cannabis has three meanings: (i) a textile plant the market in which is regulated within the Community framework and the production of which is subject to very strict legislation as regards the content of tetrahydrocannabinol (THC), the active ingredient of cannabis; (ii) a narcotic which is prohibited in a great number of Member States; (iii) the possible therapeutic use of which is under review. Further, when referred to as ‘hemp’, cannabis is used in a non-psychotropic form in the food sector in oils, herbal teas, pasta, bakery and biscuits, alcoholic and non-alcoholic beverages etc.

* The Court then summarised the principles under which a sign is deemed descriptive, i.e. where there is a sufficiently direct and specific relationship between it and the goods in question to enable the public concerned immediately to perceive, without further thought, a description of one of the characteristics of the goods and services in question. The descriptiveness of a sign may be assessed only in relation to the relevant public’s understanding of that sign and in relation to the goods or services in question.

* The relevant public in this case consisted of the average consumer of that type of goods.

* The key question here is whether the average consumer, who is reasonably well informed and reasonably observant and circumspect, may think, merely on seeing a beverage which bears as a trade mark the word sign CANNABIS, and no other additional element, that the mark at issue constitutes a description of the characteristics of the goods in question.

* There is a material link between the sign CANNABIS and certain characteristics of the abovementioned goods. Cannabis is habitually used in the manufacture of numerous foodstuffs, including beer and certain beverages.

* When he sees an alcoholic beverage or a beer bearing the trade mark CANNABIS, the average Community consumer will immediately perceive, without further thought, a description of the characteristics of cannabis, it being one of the ingredients which may be used as a flavouring in its manufacture.

* As the Board of Appeal pointed out, ‘those who purchase a beer bearing the trade mark CANNABIS will very probably do so because they are convinced that it contains cannabis and are attracted by the possibility of obtaining from the beverage the same, or at the very least similar, sensations as they obtain from the consumption of cannabis in another form’. Thus the fact that cannabis is a components of the drink constitutes a characteristic which determines the decision the consumer makes when he effects his purchase and therefore constitutes a fundamental characteristic of the goods for which the mark was registered, which is taken into account when a choice is made by the target public.

The IPKat is a little surprised by all of this. While he is not worldly-wise in the ways of cannabis, he has always enjoyed a good beer or three and greatly appreciates his wines and whiskies too. It would never have occurred to him that the presence of the word CANNABIS on the bottle indicated that its purchase and consumption would contain a promise of the sensation of taking cannabis, any more than it would occur to him that a bottle bearing the words BULLS' BLOOD would offer him the buzz of consuming that particular liquid.

Merpel says, I've occasionally heard people say they fancy a BLUE NUN ...

Why cats don't like cannabis here and here

French speakers, visual similarity sink AGILE mark

Today's pick of the Community trade mark appeals is Case T‑386/07, Peek & Cloppenburg v Office for Harmonisation in the Internal Market, Redfil. Redfil applied to register the 'Agile' figurative mark (right) for 'bags, rucksacks’ (Class 18), 'sport footwear, shirts, vests, jackets, pullovers, socks, trousers, hats, berets, visors’ (Class 25) and 'golfbags, golfing gloves, golf clubs, games balls’ (Class 28). Peek & Cloppenburg opposed, citing various national and Community trade mark registrations for the word AYGILL'S for goods in Classes 3, 6, 8, 9, 11, 14, 16, 18, 20, 21, 24, 25, 27 and 28 and maintaining that, on account of the similarity of the respective marks and the similarity/identity of goods, there was a likelihood of confusion among the relevant consumers.

The Opposition Division agreed and upheld the opposition. The Second Board of Appeal had other ideas. Since the earlier national registrations and the earlier Community registration were identical, the Board based its decision exclusively on the CTM. However, while the relevant respective goods were identical, the marks were only slightly similar: they were visually similar only to a low degree, their phonetic similarity was limited to French; there was no conceptual similarity. Accordingly, on a global assessment of the likelihood of confusion, despite the inherently distinctive character of the earlier mark and the identity of the goods in question, there was no likelihood of confusion between the marks. The degree of phonetic similarity between two marks was held to be of less importance here, since the respective goods were marketed in such a way that the relevant public, when making a purchase, usually perceived the mark designating those goods visually.

Peek & Cloppenburg's appeal to the Court of First Instance was upheld and the decision of the Board was annulled. Said the Court:

"25 ... the first four letters of the mark applied for, namely ‘a’, ‘g’, ‘i’ and ‘l’ are included in that order amongst the first five letters of the earlier mark, namely ‘a’, ‘y’, ‘g’, ‘i’ and ‘l’. Furthermore, it should be noted that the mark applied for has only five letters and that the earlier mark has only seven and that, therefore, they have in common a majority of the letters of which they are constituted. It can be deduced from those elements that the consumer will perceive the signs at issue as being visually similar despite their different ending, namely the letter ‘e’ for the mark applied for and the letter ‘l’ followed by an apostrophe and the letter ‘s’ for the earlier mark. In that regard, it should be recalled that, according to established case-law, the consumer generally pays greater attention to the beginning of a mark than to the end [citation omitted]. ...

27 ... the Board of Appeal was wrong to take into account the particular font used by the mark applied for in its comparison of the signs at issue. As the applicant is correct to note, since the earlier mark is a word mark, its proprietor has the right to use it in different scripts, such as, for example, a form comparable to that used by the mark applied for [citation omitted].

28 ... the Board of Appeal’s analysis of the visual comparison of the signs at issue was incorrect in so far as it concluded that there was only a low degree of similarity there, there being, at least, an average degree of visual similarity between them. ...

34 ... the signs at issue are visually and phonetically similar, but conceptually different.

35 ... conceptual differences can in certain circumstances counteract the visual and phonetic similarities between the signs at issue. For there to be such a counteraction, at least one of the signs at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately [citation omitted].

36 However, ... the conceptual difference between the signs at issue is not, in the circumstances of the present case, such as to neutralise the similarities found to exist.

37 ... in light of the visual and phonetic similarities between the marks Aygill’s and Agile, it cannot be excluded that consumers of the goods in question might attribute the same conceptual content to the earlier mark as to the mark applied for.

38 Therefore ... it is apparent that the effect of the conceptual difference between the signs at issue could attenuate the established visual and phonetic similarities, but not neutralise them.

39 It follows that the signs at issue must be considered to be similar overall, but to a low degree with regard at least to the French-speaking public, which, apart from a visual similarity, will also perceive a phonetic similarity between them".

Since there was a greater degree of similarity than that found by the Board, the Board was wrong to exclude that there could be a possibility of a likelihood of confusion, .

The IPKat suspects that he has not heard the last of this case. While he agrees that the degree of similarity between the marks is greater than that which the Board found, as a non-Francophone feline he does not feel qualified to make his own assessment of the degree of similarity or its impact on the consumer. However, this case looks like a close call and Redfil, having gone so far and trailing 2-1, may reckon that it has little to lose from an appeal to the Court of Justice.

No res judicata, but that's where the similarity ends

The Court of First Instance roared into action today when it dismissed the appeal of choco-champs Ferrero against OHIM's refusal to uphold their opposition to the registration as a Community trade mark of the sign depicted above in Case T‑140/08, Ferrero SpA v Office for Harmonisation in the Internal Market, Tirol Milch reg.Gen.mbH Innsbruck. Tirol Milch sought to register it in respect of ‘Yoghurt, fruit yoghurt, yoghurt drinks, yoghurt drinks containing fruit; semi-prepared and ready-to-serve meals based mainly on yoghurt or yoghurt products; yoghurt creams' in Class 29.

Ferrero opposed, citing its earlier Italian word mark KINDER for a large number of edibles (Class 30) and alleging both a likelihood of confusion and, somewhat hopefully, unspecified grievances under Article 8(5) of Regulation 207/2009. Neither the Opposition Division nor the Board of Appeal found much to commend the opposition, so the application was granted.

Never daunted by the prospect of a challenge, Ferrero then applied for cancellation of the same mark on the same grounds. Perhaps surprisingly, given the history of this case, the Cancellation Division upheld the application under Art. 8(5) and declared the mark invalid. The Board of Appeal reversed this decision, adding:

"... although decisions in opposition proceedings do not in law have the force of res judicata, the Cancellation Division remained bound by the substantive findings and conclusions of the earlier decisions of OHIM by virtue of the principle nemo potest venire contra factum proprium, which means that the administration is bound by its own acts, particularly when those acts have enabled parties to the proceedings legitimately to acquire rights to a registered trade mark.

... the marks were, overall, dissimilar, taking account of the fact that, visually and phonetically, the marks are substantially dissimilar.

... a condition for the application of Article 8(1)(b) and of Article 8(5) of
Regulation No 40/94, namely that the signs be identical or similar, was not
satisfied".

Ferrero appealed to the Court of First Instance, which dismissed [the appeal and] upheld the Board's decision. The Board was wrong on the res judicata point:

"... the Board of Appeal was wrong to hold ... that, in invalidity proceedings, the departments of OHIM were bound by findings made in a final decision handed down in opposition proceedings, according to the rule nemo potest venire contra factum proprium, the protection of acquired rights, and the principles of legal certainty and the protection of legitimate expectations. First, since no force of res judicata attaches to a decision, even when final, handed down in opposition proceedings, that decision is incapable of creating either acquired rights or a legitimate expectation as to the result of a subsequent action for a declaration of invalidity. Second, if the arguments of the Board of Appeal on that point were accepted, any action for a declaration of invalidity challenging the registration of a Community trade mark on which a decision had been made in opposition proceedings would, where the parties to the dispute were the same, the subject matter was the same and the grounds were the same, be deprived of any practical effect, although such a challenge is permitted ...".

However, the marks weren't exactly what one might call similar:

"56 First, the word ‘kinder’ is merged with the word ‘joghurt’, which means that they have no specific, independent existence. Not only do the words ‘kinder’ and ‘joghurt’ have the same visual significance, but the stylised unevenness of the dancing, undulating font used for the word ‘kinderjoghurt’ turns them into a harmonious unit in which the two constituent words have become barely perceptible. Those special features show that, contrary to what is claimed by the applicant, the word ‘kinder’ is not merely attached to the word ‘joghurt’. Moreover, because of the stylised font used for the word ‘kinder’ in the challenged mark, that mark is not visually similar to the earlier word mark on which the invalidity action is based, for which a standard font is used.

57 Secondly, it is clear that the word ‘kinder’ in the challenged mark is merely part of the word ‘kinderjoghurt’, which is of only secondary importance as compared with the word ‘timi’. In that regard, the Court must reject the applicant’s arguments which seek to show that the word ‘timi’ is not the dominant element because of its smallness and because it is allegedly less legible than the word ‘kinderjoghurt’. Visually, ‘timi’ is the focus point of the sign since it is prominently and centrally placed above the word ‘kinderjoghurt’, and accordingly attention is drawn first to it. The central positioning largely offsets the fact that the word ‘timi’ is printed in a font of smaller size than that used for the word ‘kinderjoghurt’ and the fact that the printing in white on a dark background might possibly make the word ‘timi’ less legible than the word ‘kinderjoghurt’ placed in the lower part of the sign. Moreover, aurally, it is clear that ‘timi’ is the first word to be pronounced, with the result that consumers attach most importance to it. The word ‘kinder’ is therefore overshadowed by the dominant element ‘timi’, which is undoubtedly what consumers find striking.

58 Thirdly, unlike its position in the earlier word mark on which the invalidity action is based, the word ‘kinder’ is found in the challenged mark between two other words namely ‘timi’ and ‘joghurt’. Such a difference substantially weakens not only any aural similarity between the two signs because of the shared element, but also any visual similarity as a result of that common element. Accordingly, the word ‘kinder’ is a negligible element in the overall impression produced by the mark at issue".

The IPKat thinks the CFI has got it right on both counts but suspects that Ferrero, aided by its wily team of legal advisors, will be straining at the seams to take this one further if it can.

! is not a trade mark says the CFI

On Friday 30 September 2009 the Court of First Instance decided that two trade mark applications for exclamation mark symbols (as shown on the left) are not distinctive enough to qualify for Community trade mark registration, (cases T-75/08 and T-191/08).

So far the decisions are only available in German and French and this Kat will do her best to summarise.

In two related judgments of 30 September 2009, the The Court of First Instance (Seventh Chamber) decided that an exclamation mark cannot be registered as a trade mark, dismissing an appeal by the applicant. German fashion house JOOP! GmbH had applied to register two versions of the exclamation mark, one for a simple exclamation mark, the other contained within a rectangular frame. The applicant had filed its applications for "!" for goods in classes 14, 18 and 25 on 7 September 2006. OHIM's initial examiner and OHIM's Board of Appeal had refused registration of the applications raising distinctiveness objections under Article 7(1)(b) (T-75/08 and T-191/08).

In its decisions the CFI now agreed with OHIM's assessment and took the view that JOOP!'s marks would not be seen as denoting trade origin of the goods covered, such as jewellery, clothing and fashion accessories. Consumers, including consumers having a high degree of attention, would regard a simple exclamation mark which did not contain any kind of stylisation and which did not differ from the standard type font (Times New Roman) as mere promotional message or as a mere eye-catcher ("Blickfang"). The fact that the marks had been designed by a graphic designer could not change the assessment, that consumers would not be in a position to infer the origin of the goods covered by relying on a mere exclamation mark. The court also stressed that it is was irrelevant whether similar signs had been registered by OHIM or by a national trade mark registry. The legality of a decision rendered by OHIM's Board of Appeal had to be assessed in the light of Council Regulation No. 40/94 [now 207/2009] as interpreted by the European Courts and not in the light of the registration practice of the OHIM Appeal Board (BioID C‑37/03, Deutsche SiSi-Werk, C‑173/04, PAPERLAB, T‑19/04). In addition the judges emphasised that it was established case law that the Community trade mark system was an autonomous system and independent from national trade mark laws (electronica, T‑32/00, Sykes Enterprises T‑130/01, LTJ Diffusion T‑346/04).

The court further decided that the rectangular frame used in one of the applications did not render that mark distinctive because the frame could not be regarded as a sufficiently distinctive element. The frame had to be considered as a subordinate element which made the mark appear like a label. Furthermore, placing the mark inside a rectangle was an established and common practice in the relevant industry.

Referring to the ECJ's decision in Nestlé (C‑353/03), the CFI acknowledged that both marks could (theoretically) have acquired distinctiveness through having been used as part of the applicant's "main" trade mark for "JOOP!" (shown to the right). However, the evidence furnished by the applicant only referred to the German market and not to the whole of the European Union. Also, the evidence merely consisted of three photographs showing jeans to which a piece of fabric, or a label, was attached showing an exclamation mark.

Overall, the evidence was regarded as insufficient to prove that the marks had been known to the consumers before the day of application (see ECOPY, T‑247/01).

Finally, the court stressed that additional evidence furnished by the applicant for the first time during the CFI proceedings, could not be taken into account, it was the court's task to asses the legality of OHIM's Board of Appeal decision and not to assess the facts of the case in the light of new evidence (DaimlerChrysler [Kühlergrill/Grill], T‑128/01).

This Kat thinks that these decisions do not come as much of a surprise but might serve as a reminder to applicants to furnish all possible evidence (of acquired distinctiveness) during the OHIM proceedings and not to leave it until it is too late. Hah, says Merpel, as if the lawyers did not know and as if they did not tell their clients over and over again: good evidence is simply very hard to obtain... for oh so many reasons.

The IPKat thanks Bart Goddyn and all the other readers that have alerted him to this decision.

That'll wipe half a smile off your face ...

Some people say that the IPKat gets angry too easily at soft targets like the World Intellectual Property Organization and that he's unduly critical of those noble souls who administer IP systems both internationally and on the domestic front. The good news is that the Kat will have a go at what appears to him to be wasted effort, squandered money and poor judgment wherever he finds it. One such instance is Case T‑139/08, The Smiley Company SPRL v Office for Harmonisation in the Internal Market, where it is a Community trade mark applicant who is on the receiving end.

On 14 April 2006, just 13 days after April Fools' day, Franklin Loufrani obtained an international registration, designating the European Community, for the figurative mark depicted above right, in respect of an amusingly eclectic list of items including (among other things), sun dials and ashtrays, urns of precious metal and sacred vessels of precious metal (Class 14), whips, animal collars and sling bags (Class 18) and diaper pants, ear muffs and underwear (Class 25). OHIM was not minded to let this pass, so refused to extend this protection to the world's most valuable market.

The Fourth Board of Appeal dismissed Loufrani's appeal. In its view the goods in respect of which protection was claimed were common consumer goods, the relevant public was the general public of the Community and , considering that what were involved included ‘items of jewellery, leatherware, clothing and the like’, the relevant public would pay a relatively high degree of attention when choosing those goods. However, the marks was a very simple and ordinary design with an exclusively decorative function, which would not be perceived by the relevant public as a distinctive sign. Loufrani's successor in title, The Smiley Company, appealed further to the Court of First Instance, which this morning dismissed its appeal.

The Court of First Instance was not impressed with the arguments that this mark was distinctive or that it could serve as a trade mark. Describing the mark as being

" ... composed of a curved, ascending line, comparable to a quarter of a circle, under the middle of which there is a small vertical stroke [this either is, or isn't, a printer's whoopsie: if you're the appellant, it's both], and ends, on the right-hand side, with a second short line, almost perpendicular to the first. A vaguely triangular shape marks the intersection of the two main lines. The various elements form a whole",

the Court was unimpressed by its ability to impress:

"31 There is no aspect of the trade mark at issue which may be easily and instantly memorised by an even relatively attentive relevant public and which would make it possible for it to be perceived immediately as an indication of the commercial origin of the goods in question. ... it will be perceived exclusively as a decorative element whether it relates to goods in Class 14 or to those in Classes 18 and 25. Thus, the mark at issue does not make it possible for any of the goods at issue to be distinguished from competing goods.

32 That finding cannot be called into question by the fact that the relevant public is used to perceiving figurative signs that are simply stripes as trade marks or that numerous manufacturers have registered such marks to designate goods in Class 25".

The real nature of the appeal is however revealed in paras 39 to 40: this is an attempt by The Smiley Company to strengthen its claim to the smiley emoticon:

39 Lastly, the argument that the mark at issue is identified by the relevant public as a ‘half smiley mouth’, the smiley itself having been registered as Community trade mark No 517383 [above, left], and that it is therefore distinctive cannot be upheld, even if that argument, which was formulated for the first time before the Court, were to be admissible. As OHIM states, to follow that approach would be tantamount to accepting that every extract from a registered mark and, therefore, every extract from a distinctive mark, is by reason of that fact alone also distinctive for the purposes of Article 7(1)(b) of Regulation No 40/94. That cannot be accepted. The assessment of the distinctive character of a mark for the purposes of that provision must be based on that mark’s ability to distinguish the applicant’s goods or services on the market from goods or services of the same type offered by competitors ... The fact that the mark at issue consists of part of a mark which has already been registered is not relevant in that regard.

40 In any event, although the mark at issue may, when the marks are compared side by side, be found to resemble half of the mouth in Community trade mark No 517383, it must be recalled that the average consumer must place his trust in the imperfect picture of the mark that he has kept in his mind ... Furthermore, the relevant public’s recognition, in the mark at issue, of part of Community trade mark No 517383 presupposes that the relevant public knows the latter mark, a fact that the applicant has not established. It cannot therefore be considered that, when it perceives the mark at issue, the relevant public will identify it as half of a smiley mouth or half of the smile in Community trade mark No 517383. In that regard, ... the small vertical stroke under the principal curve of the mark at issue does not appear in the mouth in Community trade mark No 517383. The possible association of the mark at issue with the mark cited by the applicant has not therefore been proved".

The IPKat is really unimpressed with this effort to register the unregistrable, which presumably must have cost a fair amount of money and effort too. To him it looks like a ploy to seek to prevent other would-be users of smiley emoticons from attempting to design around the 'usual' one -- in effect, it's an attempt to monopolise a smile. Merpel says, come now IPKat, you're being quite unfair. The public can be educated over time to recognise pretty well anything as a trade mark if you teach them properly: even if the half-smile isn't registrable now, it can still acquire distinctive character -- and even an application that is doomed to failure sends out a 'keep off the grass' warning to competitors.

More than you ever need to know about smileys here
Smiley's People here
Do cats smile? Here
Can I teach my cat to smile? Here

... and you can't patent a trade mark either

A bit like mixing tea with your coffee, citing European Patent Office decisions in Community trade mark appeals is not to everyone's taste. This is what Evets, whose DANELECTRO and QWIK TUNE Community trade marks had lapsed, attempted in Joined Cases T‑20/08 and T‑21/08, Evets Corp. v Office for Harmonisation in the Internal Market.

Evets applied for restitutio in integrum, seeking re-establishment of the right to renew its registrations, claiming that its marks weren't renewed due to an error that had occurred owing to circumstances beyond its control and that of its representative (it being the fault of a third party who didn't have Evets' correct address in its database). OHIM's Trade Marks and Register Department said no -- it was Evets' fault for not taking all due care: Evets' representative knew the marks had to be renewed but took no action to check with Evets, the third party or OHIM whether the marks were being renewed. The Fourth Board of Appeal agreed, adding that the application for restitutio had been filed too late anyway. Today the Court of First Instance agreed, dismissing the action to annul the Board's decision.

The thing that caught the IPKat's eye was Evets' unsuccessful attempt to base its appeal on the too-late-to-apply point on European patent law:

"26 ... the applicant claims that, in view of the fact that there is an overall time‑limit of 12 months within which to bring restitutio in integrum proceedings, it was the legislature’s intention that the 2‑month time‑limit should not be calculated from the date on which the expiry was notified to the representative of the proprietor of the mark. Otherwise, the 12‑month time‑limit would be redundant and the 2‑month time‑limit for bringing restitutio in integrum proceedings would have sufficed. That approach has been adopted by the Boards of Appeal of the European Patent Office (EPO), and in so far as Article 78(2) of Regulation No 40/94 is identical in substance to Article 122(2) of the Convention on the Grant of European Patents ..., the same approach should be applied in the present case.

27 ... Article 122(2) of the Convention on the Grant of European Patents no longer contains any provision on time‑limits, but refers to Rule 136 of the Implementing Regulations to the Convention on the Grant of European Patents, .... The relevant provision is thus Rule 136(1) of those implementing regulations.

28 As regards the one-year time‑limit, suffice it to point out that Article 78(2) of Regulation No 40/94 does not concern solely applications for restitutio in integrum in cases of non‑submission of a request for renewal, but also concerns failure to observe the time‑limit where the non‑observance in question has the direct consequence, by virtue of the provisions of that regulation, of causing the loss of any right or means of redress. The non-observance, and in particular the removal of its cause, can take many forms and, therefore, the one‑year time‑limit is laid down as an absolute deadline. Thus, the applicant cannot claim that that time‑limit would become redundant if the two‑month time‑limit were to be calculated from the ‘chronological date’ (here, 21 and 23 November 2006) in question. In the event that the cause of non‑compliance is removed only one year after the expiry of the unobserved time-limit, the application for restitutio in integrum is no longer admissible. The two‑month period thus forms part of the one year period.

29 As regards the practice of the EPO’s Boards of Appeal, ... the Community trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it; it applies independently of any other system ....

30 Whilst identically or similarly worded provisions in the field of European intellectual property law must where possible be interpreted with consistent effect, the European Patent Convention is not a Community instrument, nor is the EPO a Community body. The case‑law of the Boards of Appeal within that office has no binding authority in Community law (Opinion of Advocate General Sharpston in Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, point 40).

31 ... even if Article 78 of Regulation No 40/94 was drafted on the basis of a patent law model, there is nothing to suggest that the respective provisions must be interpreted identically, since the interests at issue in the two areas may differ. The legal context of patent law is different, and the provisions governing patents seek to regulate procedures different from those applicable in the area of trade marks ...

32 ... the decision of the Technical Board of Appeal of the EPO of 16 April 1985 (T 191/82, OJ EPO 7/1985, p. 189) ... in no way shows how the EPO would give a different interpretation .... In that case, it was found that, where the employee of an agent discovers that failure to observe a time-limit has led to the loss of a right, the cause of non‑compliance which is at the root of that failure – that is to say, the fact of not having realised that the time‑limit had not been observed – is deemed not to have been removed, as long as the agent concerned has not been personally informed of the situation, since it is for him to decide whether to file an application for restitutio in integrum and, if he decides to file such an application, to outline the grounds and circumstances which should be invoked before the EPO.

33 In the present case, the agent, that is to say the applicant’s representative, has not claimed that it was not personally informed of the situation on the dates of the notifications. Thus, the EPO decision in no way supports the applicant’s arguments. Moreover, the relationship between the representative and its employee cannot be treated in the same way as the relationship between a party which is represented and its representative".

The IPKat feels that this was always a non-starter and hopes it won't be raised again. Merpel says, one of the most popular books never to have been written is How to Succeed in Restitutio Applications before OHIM.

More on Danelectro here
Another Qwik Tune here

BREAKING NEWS: CFI ruling in latest BUDWEISER battle

Via the IPKat's Bloomberg friend Stephanie Bodoni comes news that Anheuser-Busch InBev NV has just lost its bid to secure a Community trade mark right to the name Budweiser for beer across the region's 27 nations in its long-running fight with Budejovicky Budvar (Case T-191/07 Anheuser-Busch v OHIM - Budejovicky Budvar (BUDWEISER), still not available on the Curia website at the time this note was posted).  According to information received, 

"The European Court of First Instance ... dismissed the case ..., ruling that Anheuser-Busch's existing rights in some EU countries can't be extended to the entire region because Budvar had the right to use the Budweiser trade mark for alcoholic beverages in Germany and Austria.

... Anheuser-Busch InBev, which in November completed a $52 billion acquisition of Anheuser-Busch ..., owns the rights to Bud or Budweiser in 23 of the EU's 27 nations. Its efforts to get the EU-wide rights have failed in some nations due to Budvar's claims.

...

Anheuser-Busch, which first applied for the EU-wide rights for the Budweiser beer name 13 years ago, took its fight to the region's main appeals court after Europe's trade mark agency in 2007 rejected the company's bid. The decision had been based on largely irrelevant documents by Czech rival Budvar to block the EU right, Anheuser-Busch had argued.

None of Budweiser s existing trade mark rights in Europe will be cancelled by today's ruling...".

Without sight of the decision, the IPKat feels it would be unwise to comment. He suspects though that there might just be an appeal, given the value of a BUDWEISER Community trade mark to Anheuser-Busch and the possibility of the European Court of Justice clarifying the position on the evidential value of advertisements and invoices as proof of use.

Addendum: the full text of the CFI's ruling is now available here

Citibank wins dilution case

Citigroup, the company responsible for Citibank has won a dilution case before the Court of First Instance.

Citi applied to register CITI in fancy script as a CTM for ‘customs agencies, property valuers, real estate agents, evaluation and administration of house contents’. Citigroup opposed, based on its family of marks consisting of or containing the word "Citi".

OHIM rejected the opposition with regard to the services of customs agencies under Art.8(5). The Board found that Citigroup didn't have a reputation in a family of marks containing the "citi" element. Only the CITIBANK mark had a reputation, and that reputation was limited to banking. Moreover, the applied-for CITI mark and the CITIBANK mark weren't similar.

The CFI avoided ruling on whether there was a family of "citi" marks with a reputation because it was possible to proceed on the basis of the CITIBANK mark having a reputation.

However, OHIM had slipped up in finding that CITI and CITIBANK were not similar since "citi" was the distinctive and dominant element of both marks. Thus the marks were visually, aurally and conceptually similar to the required degree.

OHIM hadn't got as far as ruling on whether there was dilution of the sort required to satisfy Art.8(5). Here there was an overlap between the two parties' clients, and those clients would most probably be familiar with CITIBANK, which could

"lead to free-riding, that is to say, it would take unfair advantage of the well-established reputation of the trade mark CITIBANK and the considerable investments undertaken by the applicants to achieve that reputation. That use of the trade mark applied for, CITI, could also lead to the perception that the intervener is associated with or belongs to the applicants and, therefore, could facilitate the marketing of services covered by the trade mark applied for. That risk is further increased because the applicants are the holders of several trade marks containing the component ‘citi’".

The IPKat reckons this was the correct decision. The Board's position on similarity of marks was always a bit strange here - so strange in fact that OHIM appears to have been arguing against the Board's decision. The Board saw the CITIBANK mark as a whole and didn't see CITI as distinctive or dominant. Moreover, Citigroup's reputation for CITIBANK bolstered the need to treat the mark as a whole, and not to single out the CITI element. The Kat is somewhat disappointed by the unfair advantage analysis though. In particular, rather a lot of it seems to come down to a likelihood of consumers being confused. If the EU wants a ground based on confusion where the parties' goods are disimilar, this should be explicit, rather than hiding behind unfair advantage.