Never mind the golden rabbits, what about the Golden Balls?

Readers will recall a recent report on this weblog concerning the battle faced by London-based small business operators Gus and Inez Bodur to protect their GOLDEN BALLS Community trade mark application, for goods in Nice Classes 16, 21 and 24, from an opposition by French firm Intra Presse, organisers of the Ballon D'Or ("Golden Ball", in French), the European Footballer of The Year Award. Intra Presse's earlier rights were registered for goods and services in Classes 9, 14, 16, 25 and 41, and the grounds of opposition were based on both similarity + likelihood of confusion (Art 8(1)(b) of Regulation 207/2009 on the Community Trade Mark) and repute of the earlier mark, under Art 8(5) of the same Regulation. Following a careful comparison of the marks on the basis of global appreciation, the OHIM Opposition Division ruled in the Bodurs' favour in no uncertain terms:

"From the comparison of the trade marks it emerges that the trade marks are visually and phonetically different and conceptually slightly similar for a part of the English speaking public and the French speaking public in that they share the idea of “ball/balloon” via the terms “BALLS” and “BALLON”. The Office considers that the similarities between the trade marks are not such that they are likely to overshadow the differences which remain significant. In fact, the fact that the terms “GOLDEN” and “D’OR” are not recognized, respectively, by the French speaking and English speaking consumer, as well as their position (at the start of the trade mark for one and at the end of the mark for the other) reinforces these differences".

"Finally, even if the Opponent had proved that his earlier trade mark had acquired a highly distinctive character as a result of its repute or its use, this would have no bearing on the aforementioned conclusions. This is all the more true as the Opponent has indicated that his trade mark had become highly distinctive as a result of its fame for sporting competitions, which have nothing to do with the products in the case".

[Quotes from an unofficial English translation from the original French -- about which more below].

The IPKat understands that Intra Presse is appealing, though he does not yet know the specific grounds of appeal. He is disappointed to learn this, since (i) the Bodurs are a lovely couple, who have espoused the small business values that successive British governments claim they support, and this appeal is depressing news for them; (ii) they have really suffered in commercial, financial and family terms through the drain on their time, physical and mental strength and emotional resources as they fight a battle that, they feel (and this Kat agrees) should never have to be fought, and (iii) are they are in danger of being ruined by the constant need to translate everything into French in order to support their Community trade mark application, even though the representatives of Intra Presse are perfectly capable of working in English and make mention of their ability to do so on their website.

This Kat is not blaming Intra Presse and representatives from using every legitimate weapon at its disposal to grind down and eradicate its foes, but he is unhappy that the system operates to such a manifest disadvantage of small and ill-resourced traders in situations such as this. Merpel agrees and says this: the more Intra Presse feels it has to do everything in French, the more it emphasises the gulf between comprehension of English and French and therefore the unlikelihood that consumers would associate GOLDEN BALLS with BALLON D'OR.

A tidied-up version of the unofficial English translation of the Opposition Division decision will be reported later this year in Sweet & Maxwell's European Trade Mark Reports (ETMR).

Obelix too famous to be confused with a mobile phone service

There were really no excuses for the IPKat to take so long to write a little note on Case C-16/06 P Les Éditions Albert René Sàrl v Office for Harmonisation in the Internal Market, Orange A/S. This was the final ruling that France Telecom SA's MOBILIX Community trade mark application (Classes 9, 16, 35, 37, 38, 42) was not likely to be confused with Obelix, a much-celebrated character in Albert René's equally celebrated Asterix the Gaul comic strip -- and also a Community trade mark in its own right for a wide range of goods and services. 

Right: Despite his strength, Obelix has failed to carry the day with the jurists of Luxembourg.

Albert René had claimed that CTM protection for the name of the Mobilix mobile phone service across the EU would risk confusing consumers on the ground that the words MOBILIX and OBELIX were similar and the latter was used on products of a similar nature, such as computer programs.

OHIM accepted the MOBILIX mark for registration in 2002 on the basis that the similarity was effectively offset by the fact that everyone knew Obelix as a fictional character (the "counteraction" principle). A OHIM Board of Appeal allowed the Paris-based publisher's opposition in part. In respect of MOBILIX "signalling and teaching apparatus and instruments" and OBELIX "optical and teaching apparatus and instruments" (Class 9) and MOBILIX "business management and organisation consulting and assistance, consulting and assistance in connection with attending to business duties" and OBELIX "marketing and publicity" (Class 35) there was a likelihood of confusion in the mind of the relevant public -- but that there was no such likelihood in respect of the other goods and services for which registration of MOBILIX was sought. Albert René's appeal was dismissed in 2005 by the Court of First Instance of the European Communities (CFI), which concluded that the Board's assessment was correct. It is the decision of the CFI which has been upheld this month by the Court of Justice of the European Communities.

A Bloomberg report from Stephanie Bodoni records that Jochen Pagenberg (Bardehle Pagenberg Dost Altenburg Geissler), the highly respected attorney for the French publisher, was less than happy with the decision. He is quoted as saying:

"I am completely bewildered. Only one single letter separates our trade mark from the Mobilix name. If that isn't enough anymore to justify a risk of confusion, then we can throw away the whole trade mark law".

 The IPKat begs to disagree. He thinks that the examiner, the Board of Appeal, the CFI and the Court of Justice have got it dead right. The "counteraction" theory, annunciated so clearly in the Picasso/Picaro dispute in Case C-361/04 P Ruiz-Picasso and Others v OHIM [2006] ECR I-643 (noted by the IPKat here) seems totally appropriate. Possibly this is because, when he first saw the MOBILIX mark, it suggested to him the word "mobile" and did not even call to his mind the menhir-tossing Obelix.  Merpel says, how curious it is that, even after more than a decade of attempts to establish common standards, lawyers in some jurisdictions still appear to prefer a far lower threshold as to what constitutes "confusion" than do their brethren in other countries.  Is this a crafty attempt to avoid being entrusted with the weekly trip to the supermarket to do the family shopping?

'Bud' appellation still alive and kicking, says CFI

It's not often that a decision of the Court of First Instance of the European Communities on a Community trade mark matter runs to 207 paragraphs and has its own Table of Contents (inconveniently situated at the end of the decision, where you might not immediately think of looking for it), but this morning's ruling in Joined Cases T-225/06, T-255/06, T-257/06 and T-309/06 Budějovický Budvar, národní podnik v Office for Harmonisation in the Internal Market, Anheuser-Busch, Inc. is one such case.

In short, Anheuser-Busch, Inc. applied to register as a Community trade mark the sign illustrated on the right for goods in Classes 16, 21, 25 and 32. It also filed three applications to register the word BUD in Classes 32 (beers), 33 (alcoholic beverages), 35 (setting up databases, gathering data and information in databases), 38 9 (telecommunications, ie making available and supplying data and information, supplying and communicating information stored in databases), 41 (education, entertainment) and 42 (restaurant, bar and pub services; operating a database).

As is traditional in these matters, Budvar opposed, citing (i) the figurative Bud mark illustrated here for ‘all types of light and dark beer’, effective in Austria, Benelux and Italy; (ii) the appellation of origin ‘bud’, registered, under the Lisbon Agreement, on 10 March 1975 with the World Intellectual Property Organisation (WIPO) in respect of beer and effective in France, Italy and Portugal; (iii) an Austrian appellation of origin ‘bud’ protected in Austria under a bilateral convention with the now-defunct Czechoslovakia.

The Opposition Division partially upheld the opposition filed against registration of the trade mark applied for. It considered that Budvar had demonstrated that it had a right to the appellation of origin ‘bud’ in France, Italy and Portugal, though in relation to Italy and Portugal the arguments put forward by Budvar were not specific enough to determine the scope of its protection under the national law. It found that the ‘restaurant, bar and pub services’ covered by one of the applications were similar to the ‘beer’ covered by the appellation of origin ‘bud’, there being a likelihood of confusion given that the signs concerned were identical. However, in respect of the other goods, and in the context of the applicable French law, Budvar had failed to demonstrate how the use of the mark applied for was likely to weaken or undermine the reputation of the appellation of origin concerned, when the goods covered were different. Thus the Opposition Division upheld the opposition filed only in respect of ‘restaurant, bar and pub services’ covered by Anheuser-Busch's fourth application. All other grounds of opposition against the other three applications were dismissed.

Both parties appealed, the Board of Appeal dismissing all Budvar's appeals and allowing that of Anheuser-Busch. It considered that Budvar no longer appeared to refer to its international figurative mark as the basis of its opposition, but solely to the appellation of origin ‘bud’ -- but it was difficult to see how 'bud' could be considered to be an appellation (or designation) of origin, or even an indirect indication of geographical origin [a French court had actually ruled the appellation 'bud' under the Lisbon Agreement to be invalid, in proceedings that were themselves under appeal]. The Board also held that the evidence provided by Budvar to show use of the appellation of origin ‘bud’ in Austria, France, Italy and Portugal was insufficient. Thirdly, it held that the opposition failed on the ground that Budvar had not demonstrated that the appellation of origin in question gave it the right to prohibit use of the word ‘bud’ as a trade mark in Austria or France.

This morning brought some good news for Budvar, as the Court of First Instance, consolidating all four appeals, annulled the decisions of the Board of Appeal. To add insult to injury, Anheuser-Busch was ordered to pay one third of Budvar's costs, the other two-thirds being met by OHIM. According to the Court, the protection of 'bud' under the Lisbon Agreement could not be disregarded:

"87 In the present case, the appellation of origin ‘bud’ ... was registered on 10 March 1975. France did not declare, within the period of one year from the date of receipt of notification of the registration, that it could not ensure the protection of that appellation of origin. ... when the contested decisions were adopted, the effects of the appellation of origin at issue had not been declared invalid, in France, by a decision against which there is no appeal.

88 ... Community law relating to trade marks does not replace the laws of the Member States on trade marks ... Accordingly, the Court of First Instance has held that the validity of a national trade mark may not be called in question in proceedings for registration of a Community trade mark ...

89 It follows that the system ... presupposes that OHIM takes into account the existence of earlier rights which are protected at national level. Accordingly, ... the proprietor of another sign used in the course of trade of more than mere local significance and which is effective in a Member State may, subject to the specified conditions, oppose the registration of a Community trade mark ...

90 Since the effects of the appellation of origin ‘bud’ have not been declared definitively to be invalid in France, the Board of Appeal ought ... to have taken account of the relevant national law and the registration made under the Lisbon Agreement, and did not have the power to call in question the fact that the claimed earlier right was an ‘appellation of origin’.

91 ... if the Board of Appeal had serious doubts as to whether the earlier right could be classified as an ‘appellation of origin’ and therefore as to the protection to be afforded to it under the national law relied on, when that issue was in fact the subject of court proceedings in France, the Board was entitled ... to suspend the opposition proceedings until a final judgment on the matter was delivered".

The bilateral treaty between Austria and Czechoslovakia also provided protection for the appellation 'bud':

"98 ... the bilateral convention is still effective in Austria for the purposes of protecting the appellation ‘bud’. In particular, the documents lodged in the proceedings do not show that the Austrian courts have held that Austria or the Czech Republic did not intend to apply the principle of the continuity of treaties to the bilateral convention, following the break-up of the Czechoslovak Socialist Republic. Moreover, there is no indication that Austria or the Czech Republic have denounced that convention. In addition, the ongoing proceedings in Austria have not led to the adoption of a final judicial decision. ... the Board of Appeal ought to have taken into account ... Budvar’s claimed earlier right without calling in question the actual classification of that right".

The Court added that, while an earlier trade mark right upon which an opposition is based may be discounted if that trade mark has not been the subject of genuine use, the same does not apply to oppositions founded on a non-registered trade mark or another sign used in the course of trade of more than mere local significance. Accordingly,

"... under Article 8(4) of Regulation No 40/94, it is possible for certain signs not to lose the rights attached to them, notwithstanding the fact that no ‘genuine’ use is made of them. ... an appellation of origin registered under the Lisbon Agreement cannot be deemed to have become generic, as long as it is protected as an appellation of origin in the country of origin. Moreover, the protection conferred on the appellation of origin is ensured without renewal of registration ... That does not mean that it is possible not to use the sign relied on ... However, the opposing party need do no more than show that the sign concerned was used in the context of a commercial activity with a view to economic advantage, and need not prove that the sign has been put to genuine use ...".

The IPKat found this decision a compelling read, not least because he must confess that he had little expectation that Budvar would come out of this with anything more positive than a large bill for costs. A careful reading of the cited sources does however suggest that the CFI has got it right. He also suspects that, given the issues of money and principle at stake, there will be a further appeal. Merpel finds herself thinking how sad it is that, while the law on trade marks and the law on appellations serve similar purposes from the consumer's point of view, the former is underpinned by a doctrine of "essential function" while the latter is not.

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.

Au secours!

There's another non-English Court of First Instance decision today on an appeal from an OHIM Board of Appeal on a Community trade mark law issue. It's Case T‑106/06, Demp BV, anciennement Demp Holding BV v OHIM, BAU HOW GmbH. Available in French and German only, so far, it involves the two trade marks depicted here and the IPKat thinks it's an opposition based on likelihood of confusion. More than that, he's not sure. Can anyone kindly enlighten him? Please post explanations below or email the IPKat here.