Guidelines Concerning Proceedings before the. Office for Harmonization in the Internal Market. (Trade Marks and Designs) Part C: OPOSITION GUIDELINES

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1 OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) TRADE MARKS DEPARTMENT Guidelines Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs) Part C: OPOSITION GUIDELINES Final version Status: March 2004 Opposition Guidelines, Part 1 Status: March 2004 Page 1

2 INDEX PART 0 PART 1 INTRODUCTION PROCEDURAL MATTERS PART 2 IDENTITY / LIKELIHOOD OF CONFUSION (Art. 8 (1) CTMR) PART 3 PART 4 PART 5 PART 6 PART 7 TRADE MARK FILED BY AN AGENT (Art.8(3) CTMR) NON-REGISTERED RIGHTS (Art. 8 (4) CTMR) TRADE MARKS WITH REPUTATION (Art.8 (5) CTMR) PROOF OF USE TRANSITIONAL RULES Opposition Guidelines, Part 1 Status: March 2004 Page 2

3 PART 0 INTRODUCTION This Part C of the guidelines deals with all aspects of the opposition proceedings, comprising both procedural and substantive issues. Their purpose is to ensure consistency among the decisions taken by the Trade Marks Department and Administration of Trade Marks and Designs Department of the Office and to ensure a coherent practice in the treatment of the files. Their addressees are the staff members of the Office, not the public or the parties of the proceedings. However, it is expected that parties of the proceedings also take advantage of these guidelines because they make the procedural treatment of the files and the criteria applied in decisions transparent. These guidelines incorporate the present Part C, Chapter 4, of the guidelines (concerning rights falling under Article 8(4)CTMR), which have already been adopted by Decision No EX-03-7 of the President of the Office of 20 February 2003, but for the remainder have been rewritten completely. They shall replace the existing guidelines for Part C, Chapter 1, OJ OHIM 1997, 1019, concerning the procedural aspects of the opposition procedure. These guidelines must be read in conjunction with the other guidelines concerning proceedings before the Office, in particular Part A, general provisions on proceedings before the Office. This part of the guidelines does not repeat what is said in other parts but at times contains additional information dealing with aspects which are specific to the opposition proceedings. Examiners must take into account the case law of the Court of First Instance and the Court of Justice, as well as decisions of the Boards of Appeal and of their colleagues in opposition proceedings, but they must asses each case on its own merits. These guidelines contain ample references to such judgements and decisions, R referring to Boards of Appeal decisions and numbers alone referring to decisions of the Opposition Division. Although references to these decisions in these guidelines are frequent, they are not meant to constitute an exhaustive overview on existent case law, nor meant to be a commentary to the Community Trade Mark Law. Rather, they are a compendium of practical cases that have arisen in previous proceedings and are likely to arise in the future. Therefore, it is usually not indicated whether a decision has been appealed, unless the appeal decision itself is material for the text of these guidelines. Also, the references to these decisions will not be updated as a matter of course, but only once this will be material to the guidelines and will lead to changes in substance. Although quite exhaustive, these guidelines cannot be complete. Even where an issue is addressed in these guidelines, examiners must always take into account the merits of each individual case, and when an issue is not addressed in these guidelines, examiners shall resolve the issue, based on the general principles which are developed in these guidelines. Opposition Guidelines, Part 1 Status: March 2004 Page 3

4 These guidelines will be updated in periodic intervals of two years following their adoption. To this end an open forum will be created on the website of the Office, on which organisations and individuals may submit comments. Changes of practice which are imposed as a consequence of decisions of higher authorities (Boards of Appeal, Court of First Instance, Court of Justice) will be implemented as appropriate without awaiting a formal change of these guidelines. Opposition Guidelines, Part 1 Status: March 2004 Page 4

5 Part 1, Chapter 1 and 2: INDEX I. GENERAL OVERVIEW II. RECEPTION OF THE OPPOSITION NOTICE AND PAYMENT Reception of the opposition Opposition notice and payment received within the opposition period Opposition notice late, payment within the opposition period Opposition notice within opposition period, payment late Opposition notice and payment late Payment Means of payment Current account When is the payment made? No indication/wrong indication of the amount of the opposition fee Operational current account Insufficient funds Payment of the opposition fee by debiting a current account held by a third party Bank Transfer Late reception of the fee Insufficient amount Remedy Cheque Late reception of the fee Insufficient amount Remedy In cash/credit card Evidence of payment Surcharge Communications from the opponent during this one-month period Evidence filed, but surcharge not paid Surcharge received late Legal consequences Beginning of admissibility check Deemed not entered Right to ask for a decision Fee refund No refund of surcharge...22 III. LANGUAGES AND TRANSLATIONS Opposition filed on the OHIM form Translation of the official form Translation of textual elements Opposition filed on a form very like the standard form Opposition filed on a form which is not the OHIM form Indication of the language of proceedings; language not yet determined Indication of the language of the proceedings...24 Opposition Guidelines, Part 1 Status: March 2004 Page 5

6 4.2. In which language to communicate with the opponent?...24 IV. IDENTIFICATION OF THE CTMA V. IDENTIFICATION OF GROUNDS VI. IDENTIFICATION OF THE EARLIER MARKS/RIGHTS Earlier trade mark registrations or applications Absolute identification elements Relative identification elements Earlier trade mark registrations or application with a reputation Absolute identification elements Relative identification elements Earlier well known mark Absolute identification elements Relative identification elements Agent's mark Absolute identification elements: Relative identification elements Earlier non-registered marks Absolute identification elements Relative identification elements Earlier sign used in the course of trade Absolute identification elements Relative identification elements List of goods and services Representation of earlier mark/sign Late information about the figurative character of a mark/sign Mark/sign in colour No clear representation...36 VII. THE OPPONENT/ENTITLEMENT Opponent Entitlement Capacity Change of owner (transfer of earlier mark) before the opposition is filed Oppositions based on an earlier CTM Opposition based on a national registration or application Multiple opponents Co-owners Indication of relationships other than co-ownership Evidence...41 VIII. OPPOSITION NOTICE NOT SIGNED IX. EXTENT OF THE OPPOSITION X. REPRESENTATION Legal effect of notifications to or by the representative Conflict of interest Multiple representatives, common representative Change of representative...45 XI. AUTHORISATION Authorisation for multiple opponents Extension of time limits...47 I. NOTIFICATION II. NOTIFICATION - SPECIAL ISSUES Opposition Guidelines, Part 1 Status: March 2004 Page 6

7 1. Earlier rights that are not earlier within the meaning of Article (8)(2) CTMR Opposition only based on a mark/ right that is not earlier Opposition based on earlier and non-earlier marks/rights Multiple oppositions Some earlier right(s) will not be taken into account Suspension Notifications by mail...52 I. OUTLINE OF THE PROCEEDINGS II. TRANSLATIONS / CHANGES OF LANGUAGE DURING OPPOSITION PROCEEDINGS Translation of submissions other than the opposition notice Translation of facts, evidence and arguments filed by the opponent to complete his file Translation of observations Translation of documents other than observations Proof of use Change of language during opposition proceedings...56 III. OBSERVATIONS BY THIRD PARTIES IV. AMENDMENT OF APPLICATIONS / CORRECTION OF MISTAKES Amendment of applications Correction of mistakes and errors in publications Challenge proceedings against alteration of a CTM registration Correction of mistakes in the opposition notice...60 V. TIME LIMITS General Calculation of time limits when sending notifications Expiry of time limits Extension of time limits Non-extendable and extendable time limits Request for extension Extension of the cooling off period Calculation of time limits for the extension of the cooling off Problems solved...68 VI. FEES (REFUNDS) Fee refunds / definitive payments Late payment/opposition is not duly entered CTMA withdrawn before the end of the cooling off period Opposition withdrawn due to restriction of CTMA within the cooling off period When the letter withdrawing the opposition was received by the Office before the Office had sent StandL. 222a letter to the opponent but after the applicant's letter limiting the CTMA was received by the Office When the letter withdrawing the opposition was received by the Office before the applicant s letter limiting the CTMA When the letter withdrawing the opposition was received by the Office after expiry of the two-month period set in StandL 222a...71 Opposition Guidelines, Part 1 Status: March 2004 Page 7

8 1.4. Opposition withdrawn before the end of the cooling-off period NOT due to a restriction Opposition rejected as deemed inadmissible Agreement between parties before commencement Special cases for refunding fees Opposition and withdrawal arriving on the same date % refund of opposition fee in cases of multiple oppositions Refund after re-publication Special cases for NOT refunding fees Opposition is deemed not to be entered due to lack of authorisation of the representative of the EU-opponent and the opponent does not want to continue the proceedings Mistaken refund of the opposition fee due to a wrong status CTMA rejected in parallel proceedings pursuant to Articles 41, 88(2) and Rule 76(4) during the opposition proceedings...74 VII. RESTRICTIONS AND WITHDRAWALS Restrictions and withdrawals of CTM applications Class headings Conditional restrictions Request for restriction only partly acceptable Withdrawal or restriction before admissibility check is made Restrictions and withdrawals of CTM applications before the end of the cooling-off period Restriction covers whole extent of the opposition / withdrawal Restriction does not (seem to) cover the whole extent of the opposition Restrictions and withdrawals of CTM applications after the end of the cooling-off period Restriction covers whole extent of the opposition/withdrawal Restriction does not (seem to) cover the whole extent of the opposition Restrictions and withdrawals of CTM applications after a decision has been rendered Withdrawal of oppositions Withdrawal of the opposition before the end of the cooling off period Withdrawal of the opposition after the end of the cooling off period Withdrawal of the opposition after rendering a decision Revocation of withdrawal/restriction Language...80 VIII. DISCLAIMERS (PROCEDURAL ISSUES) IX. FRIENDLY SETTLEMENT X. SUSPENSION Introduction Multiple oppositions Explanation The moment to suspend...86 Opposition Guidelines, Part 1 Status: March 2004 Page 8

9 2.3. Monitoring suspended files After rejection of the CTM application Resuming the proceedings The opposition is based on an application Explanation of the basic principle, moment to suspend Exceptions to the basic principle Earlier CTM applications Earlier national applications Nuances Monitoring suspended files Resuming the proceedings Earlier right at risk Cases envisaged Factors to consider Evidence Monitoring suspended files Resuming the proceedings Ongoing negotiations Procedural aspects...94 XI. MULTIPLE OPPOSITIONS Multiple oppositions and limitations Multiple oppositions and decisions Multiple oppositions and conversion Joinder of proceedings...98 XII. SUBSTANTIATION OF EARLIER RIGHTS Trade mark registrations or applications Certificates issued by the appropriate official body Extracts from official databases Extracts from official bulletins of the relevant national trade mark offices and WIPO Duration of a trade mark registration Verification of the evidence Renewal certificates The proprietor of the earlier registered trade marks must be the same person as the opponent Translations of evidence of trade mark registrations Boards of Appeal References to OD Decisions on issues of substantiation and translation Translation Decision on private records and substantiation Decision on different owner and opponent and substantiation Substantiation of well-known marks, trade marks filed by an agent, claims of reputation, earlier signs used in the course of trade Application by agent or representative of the real owner of the mark that is the subject of the CTM application Well-known marks Marks with a reputation Opposition Guidelines, Part 1 Status: March 2004 Page 9

10 3.4. Non-registered trade mark or another sign used in the course of trade Authentication of evidence and translations When the opposition is not substantiated XIII. ORAL PROCEEDINGS BEFORE THE OPPOSITION DIVISION XIV. DOCUMENTS NOT READABLE/ CANNOT BE HANDLED / REFERENCE TO OTHER FILES Documents not readable Documents submitted in media which cannot be handled by the Office Original documents Confidential information References made to documents in other proceedings, including before the BoA XV. NOTIFICATION BY POST; PUBLIC NOTIFICATION Notification by post Public notification Procedure for public notification XVI. CONVERSION Informing the applicant Requests made in observations Opposition based on (to be) converted CTM(A) XVII. DECISION ON THE APPORTIONMENT OF COSTS/ AGREEMENT ON COSTS In which cases must a decision on costs be taken? In which cases a decision on costs must not be taken? Agreement on costs Information from potential winning party Standard cases of decisions on costs Other cases Rejection of application pursuant to Article 88(2) Rejection of application due to third party observations Multiple oppositions Complete rejection of the CTM application Partial rejection of the CTM application Other cost issues Arguments of the parties Apportionment of costs in cases of joinder Share the costs of the opposition fee XVIII. FIXING OF COSTS Admissibility of the request Signing and sending of the fixation Evidence Cost of employees Maximum amounts Renouncement of costs Currencies/ exchange rates Confidentiality Review of fixings of costs Fixation of costs after appeal XIX. REVOCATION Opposition Guidelines, Part 1 Status: March 2004 Page 10

11 XX. CHANGE OF PARTIES (Transfer, change of name, change of representative, interruption of proceedings) Transfer and opposition proceedings Introduction and basic principle Transfer of earlier CTM Opposition based on one CTM only Partial transfer of the only CTM on which the opposition is based Opposition based on more than one earlier CTM Transfer of earlier national registration Opposition based on one national registration only Partial transfer of the only national registration on which the opposition is based Opposition based on more than one earlier national registration Transfer of the contested CTMA Partial transfer of a contested CTM application Change of name Change of representatives Interruption of proceedings due to decease, legal incapacity of a party or a representative Death or legal incapacity Bankruptcy Death or prevention for legal reasons of the representative of the applicant/opponent before OHIM to act Opposition Guidelines, Part 1 Status: March 2004 Page 11

12 Procedural matters: Admissibility - Notification PART 1: PROCEDURAL MATTERS CHAPTER 1: ADMISSIBILITY NOTIFICATION A. ADMISSIBILITY I. GENERAL OVERVIEW When the examination of the opposition starts, and after verification whether the notice of opposition was received within the opposition period, two preliminary matters have to be checked. First of all, the payment of the opposition fee, secondly if the opposition has been filed in the right language. The examination of these matters and the consequences of non-compliance are dealt with in the following chapters: II. Reception of the opposition notice and payment; III. Language and translations. Thereafter it must be verified if the notice of opposition complies with other formal requirements of the Regulations. In general, two kinds of deficiencies can be distinguished: R 18(1) IR 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 his own initiative within the opposition period, the opposition is inadmissible. R 15, 17(1), 18(2) IR, Art. 115(5, 6) CTMR Relative deficiencies, i.e. deficiencies that can be remedied after the expiry of the opposition period. The Office invites the opponent to remedy the deficiency within two months after the receipt of the notification of these deficiencies. If the opponent remedies the deficiencies, the opposition is considered admissible; if not, it will be rejected on the grounds of inadmissibility. Throughout the guidelines there are indications of whether a deficiency is considered absolute or relative, and which standard letter (StandL) has to be sent to the opponent and/or applicant. However, these StandL are no longer part of these guidelines as such and no longer reproduced as an annex. The following issues are dealt with: IV. There is no identification of the CTMA against which the opposition is directed; Opposition Guidelines, Part 1 Status: March 2004 Page 12

13 Procedural matters: Admissibility - Notification V. There is no indication of grounds; VI. There is no (sufficient) identification of the earlier right(s) on which the opposition is based, consisting of three parts, namely identification of the earlier right(s), indication of goods and services and representation of the signs; VII. The opponent / entitlement; VIII. The notice of opposition is not signed; IX. Unclear extent of the opposition; X. Representation; XI. Authorisation. Opposition Guidelines, Part 1 Status: March 2004 Page 13

14 Procedural matters: Admissibility - Notification II. RECEPTION OF THE OPPOSITION NOTICE AND PAYMENT 1. Reception of the opposition Art. 42(1) (3) CTMR The notice of opposition has to be received by the Office within 3 months of the publication of the application; the opposition must be in writing. On receipt, the notice of opposition is keyed into the database system (Euromarc), and the opponent is sent a confirmation of receipt. The applicant is informed that a notice of opposition has been filed and that it will be formally notified once it has been accepted as admissible (StandL 201a/b). When the key-in is done, the filenet of the CTMA must be checked to see if new mails have arrived after publication of the CTMA (it will be at the top of the filenet), eg. concerning limitation of g/s or a withdrawal or observations by third parties or a request for transfer or change of representative. In addition, it must be checked if this new mail has been dealt with by the examiner. In all cases a copy of the new mail should be placed directly in the opposition filenet. R 18(1) IR As there are different legal consequences for cases where the notice of opposition is received after expiry of the opposition period and for cases where the payment is received after expiry of the opposition period, the first check to be made is when the payment of the opposition fee was received Opposition notice and payment received within the opposition period If both the notice of opposition and the payment are received within the opposition period, the opponent has overcome the first hurdle of the examination and the admissibility check can continue Opposition notice late, payment within the opposition period R 54 IR If the notice of opposition was received late but the payment was received by the Office within the opposition period, the opposition is inadmissible. The Office keeps the opposition fee. StandL. 205 must be sent. It informs the opponent that his opposition is inadmissible and gives him two months to comment on this finding. If the opponent submits arguments and evidence, the Office must reconsider Opposition Guidelines, Part 1 Status: March 2004 Page 14

15 Procedural matters: Admissibility - Notification its finding and, when it is convinced that the initial finding was wrong, accept the opposition as having been received within the opposition period. In this case the admissibility check can continue. If the arguments and evidence submitted by the opponent are not convincing or if the opponent does not reply within the two months, a decision ruling the opposition inadmissible has to be taken. When notifying the opponent of the decision, the applicant must be sent a copy (StandL 207). Art. 8(3) FR, R 18(1), 54 IR 1.3. Opposition notice within opposition period, payment late If the notice of opposition was received within the opposition period but the opposition fee was received after expiry of this period, StandL 202 must be sent. If the opponent responds to this letter, proves that he effected the payment within the opposition period and, if the payment was effected within the last 10 days of the opposition period, has paid the surcharge, the opposition is deemed entered. The admissibility check can continue. If the opponent does not respond to the letter, or does not prove that he made the payment within the opposition period, and/or did not pay the surcharge, the opposition is deemed not to have been entered. StandL 203 version A has to be sent to the opponent. The OD does not take a decision unless requested to do so by the opponent, and the opposition fee is refunded. The applicant must be informed if the case is closed, either by sending him a copy of the decision or by confirming that the opposition is deemed not entered. As the opposition notice was received within the opposition period, this situation cannot occur if the fee is paid by current account. R 18(1) IR 1.4. Opposition notice and payment late If both the payment and the notice were received too late, the Office must send StandL 203, version B. This letter informs the opponent that his opposition is deemed not entered and that even if the opposition could be considered entered, it would be inadmissible and that the Office will refund the opposition fee or not debit the current account. Opposition Guidelines, Part 1 Status: March 2004 Page 15

16 Procedural matters: Admissibility - Notification 2. Payment The Office has to receive the opposition fee of EUR 350 within the opposition period (Art. 42 (3) CTMR). Payment of the opposition fee can be made in four different ways (2.1.). If the opposition fee was received after the expiry of the opposition period but payment instructions to the bank had actually been given within the last 10 days of the opposition period, under the terms of Article 8 FR the opposition can be saved if the opponent files evidence of having paid on time (2.2.) and pays a surcharge of 10% of the opposition fee (2.3.). If the opposition fee has not been received within the opposition period, or if the exception just mentioned does not apply, the notice of opposition is deemed not to have been entered (Rule 18 (1) IR) (2.4.). Art. 6 FR, Com 9/98 of 27/10/98, OJ 1998, Means of payment All payments must be made in euro. They can be made in four different ways: Current account (2.1.1), bank transfer (2.1.2), cheque (2.1.3) and cash/credit card (2.1.4). Each means of payment has its peculiarities. These are described below Current account When is the payment made? Art. 8(1) FR, Art. 7(e) Dec EX-96-1, last amended by Dec. EX-03-3 The payment is considered effective on the day the Office is requested to deduct the opposition fee from the current account. This is normally the day on which the opposition is received, since an opponent indicates in the notice of opposition that he wishes to pay through his current account. In this case, boxes 15 and 16 in the Opposition Form are ticked. Since the payment 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, before checking admissibility issues the opposition must be rejected as deemed not to have been entered. Opposition Guidelines, Part 1 Status: March 2004 Page 16

17 Procedural matters: Admissibility - Notification Com 5/ of No indication/wrong indication of the amount of the opposition fee The system of current accounts is an automatic debiting system. That means that without any instructions and for all kind of financial transactions such accounts may be debited by the Office. No indication or wrong indication of the amount of the opposition fee does not have any negative effect, because it is clear that the opponent wanted to pay the amount of the opposition fee. For example, if the opponent indicated that EUR 300 is to be deducted from his account, the Office will automatically deduct EUR 350. Even if there is no express request from the opponent, the existence of a current account would in such a case be sufficient in order for the account to be debited. This is true independently of the use of the opposition form 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 Operational current account A current account can only be debited when it is operational. This means that within fifteen days following the opening of the account, the opponent must deposit EUR If he does not deposit this amount, the account will not become operational. The opposition fee cannot be duly paid through such an account, so the opposition is rejected as deemed not to have been entered Insufficient funds If there are insufficient funds in a current account, the holder will be notified by the Financial Department of the Office and given the possibility to fill up his account. If he does so, the payment of the fee will be deemed to have been received on the date the notice of opposition was received by the Office. Opposition Guidelines, Part 1 Status: March 2004 Page 17

18 Procedural matters: Admissibility - Notification Payment of the opposition fee by debiting a current account held by a third party Payment of the opposition fee by debiting a current account held by a third party requires an explicit authorisation of the holder of the current account that his account can be debited for the benefit of the particular fee. In such cases it must be checked if there is an authorisation. If there is not, a letter is to be sent to the opponent asking him to submit an authorisation that authorises the Office to debit the account held by a third party. Once the authorisation has been received, the Financial Department must be informed in order to allow the debiting. The mail to the Financial Department must include the authorisation Bank Transfer The payment is considered to have been made on the day it is actually entered in a bank account held by the Office, not on the day it was effected Late reception of the fee Art. 42(3) CTMR, Art. 9(1) FR If the full amount of the fee is received after the expiry of the opposition period, StandL 202 has to be sent. This letter informs the opponent that the fee was received late and explains under what conditions the Office can consider the payment as having been paid within the opposition period Insufficient amount Art. 9(2) FR, Com No 6/96 Art. 9(2) FR, Com No 6/96 - Due to an error of the opponent If only a part of the opposition fee is received, because the opponent only paid part and the opposition period has already expired, StandL 203 has to be sent. The opposition is considered not entered. - Due to a bank error If only part of the opposition fee is received because the bank deducted transfer costs, although the opponent gave clear instructions that he would pay the transfer costs, an adapted version of StandL 202 should be sent. Whether this condition is met can be inferred from the amount that is received. Since the opponent did everything in his power to ensure that the Office would receive the full amount of the opposition fee, but his bank failed to follow his instructions, he is given the chance to remedy the situation. Opposition Guidelines, Part 1 Status: March 2004 Page 18

19 Procedural matters: Admissibility - Notification Remedy Art. 8(3) FR If payment was effected in the last ten days of the opposition period but was received by the Office after the expiry of the opposition period, the opponent has to provide evidence that the bank order had been placed or that the transfer had been made within those ten days, and has to pay a surcharge of EUR 35 within one month of receiving StandL 202. For payments effected before the last ten days of the opposition period the opponent does not have to pay the surcharge. He only has to prove the payment was made in due time Cheque Art. 8(1) FR The payment is effected on the day the cheque is received by the Office under the condition that the cheque is met Late reception of the fee Art. 42(3) CTMR, Art. 9(1) FR If the full amount of the fee is received after the expiry of the opposition period, StandL 202 must be sent Insufficient amount Art. 9(2) FR, Com No 6/96 If only a part of the opposition fee is received because the opponent only paid part and the opposition period has already expired, StandL 203 is to be sent. The opposition is considered not entered Remedy Art. 8(3) FR If the cheque was received by the Office after the opposition period, the opponent has to provide evidence that the cheque was dispatched at a post office or otherwise (for example a reliable courier service) within those ten days, and has to pay a surcharge of EUR 35 within one month of receiving StandL 202. For payments effected before the last ten days of the opposition period the opponent does not have to pay the surcharge. He only has to prove that the cheque was sent in due time In cash/credit card Opposition Guidelines, Part 1 Status: March 2004 Page 19

20 Procedural matters: Admissibility - Notification Art. 8(1) (c) FR, Dec No EX-01-1 The method of payment in cash has hardly ever been used. If it is used, payment in cash can only be effected at the seat of the Office in Alicante. It is considered effected on the day the payment is made. Payment can also be made by credit card, though only at the reception desk of the Office. The payment is deemed to have been made on the date on which the credit card transaction is effected. Where the transaction fails for whatever reason, or where the Office refuses to accept the credit card, payment is considered not to have been made. 3. Evidence of payment Art. 76 CTMR, Art. 8(4) FR The following are acceptable means of evidence: - Letters from the bank where the payment was effected, certifying the day the order was placed or the payment was made, indicating the opposition for which it was made. - The order for bank transfers containing stamps and date of receipt by the bank involved - Statements from the opponent or his representative in writing, sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up. Although these statements or affidavits are valid means of evidence, if it is the only means of evidence received, it is considered insufficient to prove that a payment was made on a certain date. Only if the statement is supported by other evidence can it be considered sufficient. - A post office receipt referring to a registered letter containing a cheque. - A payment order given online through Internet or a print out of an electronic transfer provided it contains information on the date of the transfer, on the bank it was sent to, and that it contains information like transfer done. In case of doubt, StandL 202 has to be sent asking for further evidence. This list is not exhaustive. The evidence provided by the opponent does not have to be in the language of the proceedings. Rule 96(2) IR applies. If no evidence is provided, the opposition is deemed not to have been entered. StandL 203 is to be sent. 4. Surcharge Opposition Guidelines, Part 1 Status: March 2004 Page 20

21 Procedural matters: Admissibility - Notification Art. 8(1), (3) FR When the Office informs the opponent that the payment arrived late, the opponent is given one month in which to prove that he made the payment within the opposition period and, if necessary, to pay a surcharge of EUR Communications from the opponent during this one-month period Communications sent by the opponent within the one-month period (for example a request for clarification), without payment of the surcharge within the same period, do not mean that the opponent has the right to pay later. In other words, a letter from the opponent does not automatically extend the time limit for paying the surcharge Evidence filed, but surcharge not paid Art. 8(3) FR If the requested evidence is filed, but the surcharge is not paid, the opposition has to be rejected as not entered; StandL Surcharge received late Art. 8(3) FR If the surcharge is received by the Office after the expiry of the one-month period given in StandL 202, the opposition is accepted provided the opponent submits evidence that he gave the instruction to the bank within the time limit to pay the surcharge. If no such evidence is on file, a modified StandL 202 has to be sent. No surcharge of the surcharge is requested. 5. Legal consequences 5.1. Beginning of admissibility check Art. 42(3) CTMR, R 18(1) IR An opposition for which the payment is effected on time or can be deemed as effected on time is considered entered. This means that the admissibility check may begin Deemed not entered An opposition for which the payment is not effected on time or cannot be deemed as effected on time must be rejected as not entered. This means that StandL 203 must be sent. Opposition Guidelines, Part 1 Status: March 2004 Page 21

22 Procedural matters: Admissibility - Notification A copy of this letter must be sent to the applicant for information purposes at the same time. If within the one-month period of StandL 202 the opponent provides evidence that our finding concerning the loss of rights was inaccurate, and he proves that the payment was made on time, StandL 204 has to be sent with a copy to the applicant together with the evidence provided by the opponent Right to ask for a decision R 54 IR If it is determined that an opposition must be deemed as not entered, the Opposition Division informs the opponent of his loss of rights. However, the opponent has the right to request a decision. If he does so, the decision must be sent to both parties with StandL 206a and 207, deleting from StandL 207 the indications which refer to inadmissibility Fee refund Art. 9(1) FR If an opposition is deemed as not entered, the opposition fee must be refunded to the opponent No refund of surcharge The reimbursement of the opposition fee provided for in Rule 19(3) IR does not include any surcharge paid by the opponent on the basis of Art. 8(3) FR. The surcharge paid is here considered as compensation for additional administrative work carried out by the Office because of the late payment of the opposition fee. However, the Office will refund not solely the opposition fee but the surcharge as well if the latter is paid definitely after the one-month period prescribed in Art. 8(4) FR. It appears to be consistent in such a case to apply the third sentence of Rule 18(1) IR by analogy, pursuant to which the opposition fee shall be refunded to the opponent if it has been paid after the expiry of the opposition period. Opposition Guidelines, Part 1 Status: March 2004 Page 22

23 Procedural matters: Admissibility - Notification III. LANGUAGES AND TRANSLATIONS Art. 115(5), (6) CTMR, R 17(1) IR BoA Ultravit R 197/2000-3, Nobody's fool R752/ According to Article 115 CTMR, the opposition has to be filed either in the second language of the contested application, which is always one of the languages of the Office, or, if both languages of the application are languages of the Office, in either of these two languages. If an opposition is filed in one of the languages of the Office that cannot be the language of the proceedings, the opponent will have to file a translation within one month of the expiry of the opposition period, on his own initiative. If no translation is received within this period, StandL 208 must be sent to the opponent allowing him a period of two months for filing a translation. As decided by the Boards of Appeal, Rule 17 IR represents another provision in terms of Rule 18(2) IR. When the opponent files a translation of the opposition notice, the examination can continue. If he does not file the translation within the period of two months, the opposition has become inadmissible. StandL 207, together with a copy of the decision, must be sent to the applicant. Three possible cases can be distinguished, namely opposition filed on the OHIM form, opposition filed on a form very like the standard form and opposition filed on a form which is not the OHIM form. Art. 42(3) CTMR, R 18(1), (2) IR, R 83(3) IR, R 15(2)(b)(vii) 1. Opposition filed on the OHIM form 1.1. Translation of the official form If an opposition is filed on the OHIM opposition form, the form itself does not need to be translated. The Opposition Division has all the linguistic versions of the official form. When the opposition is notified to the applicant, a blank OHIM form in the correct language must be attached to the OHIM form filed by the opponent Translation of textual elements All textual elements in a notice of opposition must be translated into the language of the proceedings. Names, addresses, numbers and dates cannot and need not be translated. If an opposition is filed on an OHIM opposition form and only contains textual elements which cannot be translated such as names, dates etc., no translation is needed. Opposition Guidelines, Part 1 Status: March 2004 Page 23

24 Procedural matters: Admissibility - Notification The list of goods and services has a special regime. Explanation of grounds: When one of the boxes concerning grounds is ticked and additionally an explanation of grounds (box 99 or annex) is furnished, this explanation does not need to be translated at the admissibility stage. Indications like see annex, see attachment, will be provided later do not need to be translated. 2. Opposition filed on a form very like the standard form Rule 95 allows the use of standard forms in any of the official languages of the Community provided that the form is completed in one of the languages of the Office, as far as textual elements are concerned. Oppositions are accepted in the wrong language if they are presented on the standard form or something very like it provided that there are no textual elements in the wrong language. A form is considered as something very like the standard form when it has a very similar structure to the standard form, the same codes and similar wording. R 83(6), R 17(1) IR 3. Opposition filed on a form which is not the OHIM form If an opposition is filed on a form which is not the OHIM opposition form (or a copy of this form or a form with the same content and format as this form), and is in a language of the Office that cannot be a language of the proceedings, in accordance with the above, if no translation is received within the one month, the notice has to be fully translated into the language of the proceedings within the two-month period set by means of StandL Indication of the language of proceedings; language not yet determined 4.1. Indication of the language of the proceedings When there are two languages that can be the language of proceedings (eg. FR or IT) the opponent has to indicate which language he chooses. If there is no indication, either direct or indirect, StandL 208 has to be sent in one of the possible languages. If no reply is received, the opposition is inadmissible In which language to communicate with the opponent? Opposition Guidelines, Part 1 Status: March 2004 Page 24

25 Procedural matters: Admissibility - Notification When the notice of opposition is filed in one of the five languages of the Office which is not an appropriate language of the proceedings, (e.g. opposition in FR, application languages NL, EN or IT, EN) and the opponent has not yet indicated which will be his choice, the procedure is as follows. StandL 201 and subsequent communications must be addressed to the opponent in one of the languages available in the particular case for the opposition (either the first or the second language of the application), and not in the (wrong) language in which the notice was filed. For example if the application is in NL and EN, the language of the proceedings is already known (EN). Consequently, communications addressed to the opponent must be in that language. If the application is in IT and EN, communications with the opponent must be in either of these languages, that is IT or EN. Once a choice has been made, all communications must be in this language. This also applies to the language of an eventual decision. Opposition Guidelines, Part 1 Status: March 2004 Page 25

26 Procedural matters: Admissibility - Notification IV. IDENTIFICATION OF THE CTMA Art. 73 CTMR, R 18(1) IR If the CTMA against which the opposition is filed is not identified, the opposition is inadmissible. StandL 205 is to be sent before rejecting it. R 15(2)(a) IR, R 15(2)(a)(ii) IR The only mandatory identification element for identifying a CTMA is the application number. In order to be able to eliminate possible errors in the identification of CTMA the opponent should indicate the name of the applicant. If the indicated application number does not correspond to the indicated name of the applicant, B-staff will decide if it can be established without any doubt which is the contested CTMA. If the applicant s name is not indicated, it can be found in the publication of the CTMA. The date of publication is an optional indication, which helps to double-check the identification of the CTMA. Even if it is missing, the CTMA can be sufficiently identified through the other indications. If the opponent has made a mistake but nevertheless by performing a search in Euromarc it can be established without any doubt against which CTMA the opposition is directed, the opposition is admissible on this account. Only one CTMA can be contested in one notice of opposition. R 18(1) IR, Art. 73 CTMR If the CTMA 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 StandL 205 has to be sent. Opposition Guidelines, Part 1 Status: March 2004 Page 26

27 Procedural matters: Admissibility - Notification V. IDENTIFICATION OF GROUNDS Art. 42(3), Art. 73 CTMR, R 15(2)(d), R 18(1) IR, An opposition without any indication of grounds is inadmissible. However, before rejecting it, a careful assessment of the entire notice of opposition must be made: if it is possible to deduce the grounds from its components, the opposition is admissible. Otherwise, StandL 205 has to be sent before rejecting the opposition. It must be possible to deduce the grounds of the opposition without any doubt. It does not matter whether the grounds are indicated in the opposition form, its annexes or its supporting documents. It is not necessary that a specific word is indicated, as long as the ground is unequivocally clear. BoA Pancaldi r 80/1998-3, Nordic Gear R 103/1998-2, Orion R 105/1998-1, Felix R 181/ As laid down by the Boards of Appeal, if the marks and goods or services of both the earlier right and the CTM application are identical, the opposition will, even though the grounds are not expressly indicated, be accepted with Art. 8(1)(a) as a ground. In any other case, it will depend on the circumstances of the case. If, for example, no list of the goods/services of the earlier trade mark is provided, no clear assumption can be made on the grounds of the opposition. (As the absence of an identification of grounds is a deficiency that cannot be remedied after the expiry of the opposition period, StandL 208 asking for the goods and services on which the opposition is based should not be sent) In this case, the opposition will be rejected as inadmissible (different approach in BoA, Editorial Planeta). Art. 42(3) CTMR, R 18(1), R 83 IR When an opposition is filed on an OHIM form, ticking one of the boxes is considered to be sufficient for admissibility purposes, even if the indicated ground does not correspond to the earlier right on which the opposition is based. An additional explanation of grounds in a wrong language does not change this. Art. 42(3) CTMR, R 18(1) When an opposition is not filed on an OHIM form, grounds must be identified. Enigma 165/ R At the stage of the admissibility check, the Office will not examine the adequacy of the ground indicated by the opponent. It is a matter of substance whether the Office should consider, for example, Article 8(1)(b) when the opponent has invoked only Article 8(1)(a). Opposition Guidelines, Part 1 Status: March 2004 Page 27

28 Procedural matters: Admissibility - Notification VI. IDENTIFICATION OF THE EARLIER MARKS/RIGHTS Art. 8(2) CTMR, R 18(1) The earlier mark(s)/right(s) form the basis of the opposition. Their identification is necessary, because the opposition depends on these earlier mark(s)/right(s). First of all, the right has to be of an earlier date than the contested CTMA. However, even if the claimed earlier right is apparently not earlier, this is a matter of substantiation and not of admissibility. The examination of admissibility must proceed as normal and only at the time of notification it will be pointed out to the opponent that the earlier right appears not to be earlier. (See Part B, Notification of the opposition, notification of an opposition based on a right that is not an earlier right.) R 15(1) IR An opposition against a CTMA can be based on one or more earlier mark(s)/right(s) which belong to the same opponent. Art. 73 CTMR Each earlier mark/right has to be examined to see if it is clearly identified. If one of them is not duly identified, both the opponent and the applicant must be informed that this mark or right will not be taken into account. If it concerns the only earlier right on which the opposition is based, the opposition is inadmissible and StandL 205 is to be sent. If the opposition is based on more than one earlier right and one of them has been correctly identified, the opposition is partially inadmissible. The parties are informed thereof when the opposition is notified. A paragraph is added to StandL 211, 212. The requirements that have to be fulfilled in order to consider an earlier mark/right as duly identified, depend on the mark/right on which the opponent bases his opposition. A distinction is made between absolute and relative identification elements. R 18(1) IR If absolute identification elements are missing the earlier mark cannot be identified and therefore cannot serve as a basis for the opposition. It is only possible to remedy this deficiency within the opposition period. R 18(2) IR If relative identification elements are missing, it is possible to identify which earlier mark/right is claimed, but more detailed information is necessary. If this is the case, the opponent will be given a two-month period to remedy the deficiency. If he does not comply within the time limit, the opposition will be inadmissible or the mark or right in question will not be taken into account. Absolute and relative 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. Opposition Guidelines, Part 1 Status: March 2004 Page 28

29 Procedural matters: Admissibility - Notification An opposition can be based on six types of earlier rights: Earlier trade mark registrations or applications (1), earlier trade mark registrations or applications with a reputation (2), earlier well-known marks (3), agents' mark (4) and earlier unregistered trade marks (5) and earlier signs used in the course of trade (6). This chapter first deals with the identification elements of these earlier rights. Separately, it also deals with goods and services (7) and representation of the earlier marks/signs (8). Art. 8(2)(a),(b) CTMR 1. Earlier trade mark registrations or applications 1.1. Absolute identification elements These rights are Community trade mark registrations or applications, national or Benelux trade mark registrations or applications (including ex Community trade marks for which a request for conversion has been filed) and trade mark registrations or applications under the international agreements, the so-called international trade mark registrations or applications. The absolute identification elements for these marks are: - The registration/application number. National applications deriving from the conversion of an earlier CTM(A) are considered to come into existence as soon as a valid conversion request is filed. Such rights will be properly identified for admissibility purposes under Rule 18(1) IR if the opponent indicates the number of the CTM(A) under conversion and the countries for which he has requested the conversion. - The Member State where it is registered/applied for. The indication of a Member State without indication of the type of mark can mean that the earlier mark is a national mark or an international registration with effect in this Member State, or, when all Member States are indicated, that it is an earlier CTM. If the Member State is not indicated in the opposition notice but a certificate is attached, it is considered that the Member State is sufficiently identified, even if the certificate is not in the language of the proceedings. A translation of the certificate should not be asked for at this stage in the proceedings. If it concerns a certificate of an International Registration it is assumed that the opposition is based on this mark in all the Member States and/or the Benelux countries indicated in the certificate Relative identification elements Opposition Guidelines, Part 1 Status: March 2004 Page 29

30 Procedural matters: Admissibility - Notification R 15(2)(b)(i), (vi), (vii) IR -Representation of the mark If the earlier mark is a figurative mark, StandL 208 has to be sent. The (colour) representation has to be requested as soon as the Office is informed that an earlier mark is a figurative one. If there is a relevant indication in the notice of opposition, StandL 208 has to be sent before notification. If the opponent informs the Office at a later stage of the figurative character of his mark, the representation has to be asked for at that stage. If he does not comply, his notice will be rejected as inadmissible. (See also paragraph 8.) -Type of mark The possible types of mark are Community trade marks, national marks or international registrations with effect in a Member State/Benelux countries. - Goods and services Indication of the goods and services on which the opposition is based: if the opponent has not indicated them, StandL 208 is to be sent. - Other indications Such as the filing date, filing number, registration date: these indications can be important in order to be able to eliminate possible errors when identifying the earlier mark. If the absolute identification elements are complete, the admissibility of the earlier mark as a basis of the opposition is not affected if these elements are lacking. 2. Earlier trade mark registrations or application with a reputation 2.1. Absolute identification elements Earlier trade mark registrations or applications with a reputation are marks that are not only registered or applied for but for which the opponent claims that they are reputed. - All the elements required for a registered mark. R 15(2)(b)(vii) IR 2.2. Relative identification elements - All the elements required for a registered mark; Opposition Guidelines, Part 1 Status: March 2004 Page 30

31 Procedural matters: Admissibility - Notification - Indication of the goods and services for which reputation is claimed. If nothing is indicated, it is assumed that the reputation is claimed for all the goods and services for which the trade mark is registered. - Indication of the Member State in which the mark has reputation. If this indication is missing, it is assumed that the mark has reputation in the Member States indicated in box Earlier well known mark According to the CTM Regulation, an earlier well-known mark is a trade mark that is well known in a Member State, in the sense in which the words well known are used in Article 6 bis of the Paris Convention. These marks are protected without registration in the Member State concerned. Registered marks that are claimed to be well-known are covered by the previous categories. (See also Part 5, Trade marks with reputation, II, 1.2) 3.1. Absolute identification elements R 15(2)(b)(iii), (vi), R 18(1) IR - A representation of the mark: As there is no registration/application number which allows the Office to unequivocally identify the mark, if the owner of an earlier well-known mark does not provide a representation of his right within the opposition period, this right will be inadmissible as an opposition basis (StandL 205). - The representation can be the indication of the word if it concerns a word mark. - 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 an opposition basis Relative identification elements R 15(2)(b)(vi), R 18(1) IR - An indication of the goods and services on which the opposition is based. If the opponent has not indicated them, StandL 208 is to be sent. (See further paragraph 7.) - If the owner of an earlier well-known mark does not provide a representation of his right within the opposition period, this right will be inadmissible as an opposition basis. However, if the opponent indicates as an earlier well known mark for example NIKE (fig), he will be given the possibility of remedying the deficiency and StandL 208 is to be sent. Opposition Guidelines, Part 1 Status: March 2004 Page 31

32 Procedural matters: Admissibility - Notification 4. Agent's mark Art. 8(3) CTMR, R 15(2)(b), R 15(3) IR An agent's mark is a mark for which the opponent claims that the applicant who has or had a business relationship with the opponent applied for this mark without the consent of the opponent Absolute identification elements: - Registration/application number, or a representation of the unregistered trade mark of the real owner. - Indication of the type of his earlier mark in the country of origin (Community mark, national mark, international registration with effect in a Member State, well-known mark or national registration in any third country outside the Community). - Indication of the country of origin which can also be any third country outside the Community Relative identification elements R 15(2)(b)(vivii), R 15 (3) IR - An indication of the goods and services on which the opposition is based. If the opponent has not indicated them, StandL 208 is to be sent. - Representation of a figurative mark, in colour where appropriate. If the opponent has not submitted one, StandL 208 is to be sent. 5. Earlier non-registered marks This category consists of signs that are unregistered and used as trade marks Absolute identification elements R 15(2)(b)(v), (vi), R 18(1) IR - An indication of the word mark or a representation of the figurative mark. If the owner of an earlier non-registered mark does not provide a representation of his right within the opposition period (or an indication like "XXX" (fig), this right will be inadmissible as an opposition basis (StandL 205). - An indication of the Member State where the mark is protected: if this indication cannot be deduced from the documents on file, the mark is inadmissible as an opposition basis. Opposition Guidelines, Part 1 Status: March 2004 Page 32

33 Procedural matters: Admissibility - Notification 5.2. Relative identification elements R 15(2)(b)(vii) IR - An indication of the goods and services on which the opposition is based. If the opponent has not indicated them, StandL 208 is to be sent. (See further paragraph 7.) - If the owner of an earlier non-registered mark does not provide a representation of his right within the opposition period, this right will be inadmissible as an opposition basis. However, if the opponent indicates as an earlier non-registered mark for example NIKE (fig), he will be given the possibility of remedying the deficiency and StandL 208 is to be sent. 6. Earlier sign used in the course of trade This category consists of a great number of different earlier rights, among others rights to a company name, trade name, business sign, ensigns, titles of protected literary/artistic work and the right to a sign under passing off. R 15(2)(b)(vi), R 15(2)(b)(ii), R 18(1) IR, R 15(2)(b)(v) IR 6.1. Absolute identification elements - An indication of the sign (word) or a registration/application number of the sign if it concerns a registered sign or, if it concerns a figurative earlier sign, a representation of this sign. If the owner of a figurative earlier non-registered sign used in the course of trade does not provide a representation within the opposition period (or an indication like "XXX" (fig), this right will be inadmissible as an opposition basis (StandL 205). - An indication of the nature of rights: 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 work are acceptable indications of the nature of rights. On the contrary, general terms such as common law and unfair competition without an indication of the specific nature of the right are not accepted because they do not identify a specific right. (This list is not exhaustive.) However, if the opponent bases his opposition on a right that cannot be an earlier right under 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 sign is protected: if this indication cannot be deduced from the documents on file, the sign is inadmissible as an opposition basis. Opposition Guidelines, Part 1 Status: March 2004 Page 33

34 Procedural matters: Admissibility - Notification R 15(2)(b)(vii) IR 6.2. Relative identification elements - An indication of the goods and services on which the opposition is based. If the opponent has not indicated them, StandL 208 is to be sent. - In cases of trade names or similar signs the opponent has to indicate the commercial activities in the course of which the sign is used. If there is no such indication, StandL 208 is to be sent. In the absence of a reply, the Office will reject the opposition under Rule 18(2) IR applying Rule 15(2)(b)(vii) by analogy. R 15(2)(b)(vivii), R 15(3) IR - Representation of a figurative mark or sign, in colour where appropriate. If the opponent has not submitted one, StandL 208 is to be sent. If he has only indicated for example NIKE (fig), StandL 208 is also to be sent. 7. List of goods and services R 15(2)(b)(vii) IR, R 18(2) IR The list of goods and services in the language of the proceedings is a relative admissibility element. Therefore, it must be checked if the opponent has provided a list of goods and services or activities of the earlier rights on which he bases his opposition. The opponent can base his opposition either on all the goods and services (or activities if it concerns an earlier sign used in the course trade) or on part of the goods and services (activities) for which his earlier rights are registered (or used). The list can be indicated in the opposition notice itself or in an attachment or in a registration certificate. Only when it is clear which goods, services or activities these are, and when they are specified in the language of the proceedings has the opponent complied with the requirement. In all other cases, i.e. no list of goods and services or activities has been provided, when this list is not in the language of the proceedings, or when the opponent has used unclear terms (for example 'collectible items'), StandL 208 has to be sent. Independent of whether the opponent uses the OHIM opposition form, it has to be clear on which goods and/or services of his earlier right he bases his opposition. Therefore, if an indication like "the opposition is based on all goods in class 9" is used and no registration certificate is attached, StandL. 208 must be sent. The opponent has to specify which goods these are. The Office requires a specification in the language of the proceedings. Only when he replies that he owns a registration with a description that Opposition Guidelines, Part 1 Status: March 2004 Page 34

35 Procedural matters: Admissibility - Notification mentions that the sign is registered for all goods in class 9 " is this acceptable. If the opponent has not indicated, or has not clearly indicated, on which goods and/or services he bases his opposition, in cases where a certificate in the language of the proceedings is attached, it is assumed that the opposition is based on those g&s that appear in the certificate. However, if the certificate is in a language other than the language of the proceedings, StandL 208 is to be sent. If an opposition is based on all identical / similar g&s, StandL 208 should be sent as this wording is not sufficiently clear to identify the basis of the opposition. R 18(2), R 71(1) IR BoA Boulevard, R 844/ In the cases where StandL 208 is sent, but no list of g&s is provided within the time limit, the opposition has to be rejected as inadmissible. The time limit of two months set by the Office is not extendable. 8. Representation of earlier mark/sign R 15(2)(b)(vi), R 18(2) IR In order to judge the identity/similarity between two marks, a representation of those marks/signs is indispensable. As soon as it becomes clear that a figurative or 3D mark or sign is invoked, the Office must request a representation of that mark/sign, even if it may later appear that the figurative or 3D element will not play an important role in the evaluation of identity/likelihood of confusion. R 18(2) IR The deficiency of a missing representation of an earlier mark/sign can be remedied if it concerns an earlier registered mark/sign: StandL 208 is to be sent. In this case the mark is identified through the indication of the type of mark, the Member State and of the registration number. When the earlier mark or sign is not registered, there is no possibility of identifying the mark/sign with certainty if no representation is provided within the opposition period. If the owner of a non-registered mark or sign (an earlier well known mark/an earlier non-registered sign used in the course of trade/an earlier non-registered mark) does not provide a representation of his right within the opposition period, this right will be inadmissible as an opposition basis (StandL 205). However, if the opponent indicates as an earlier non-registered mark for example NIKE (fig), he will be given the possibility of remedying the deficiency and StandL 208 is to be sent. Opposition Guidelines, Part 1 Status: March 2004 Page 35

36 Procedural matters: Admissibility - Notification 8.1. Late information about the figurative character of a mark/sign When after notification of the opposition it becomes clear that the earlier nonregistered mark or sign is figurative (and not a word mark as the opponent had indicated in the notice of opposition), it will be decided in a decision on substance that the opponent did not submit valid evidence of the respective earlier non-registered mark or sign. However, when the differences between "word" and "figurative" are marginal the evidence can be accepted as valid Mark/sign in colour If the mark/sign is in colour, a colour representation is to be asked for. If the opponent fails to comply with the request the opposition will be rejected as inadmissible or the earlier mark will not be taken into account if the opposition is based on other earlier rights as well. 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 Spain and Portugal. In these cases we neither ask for a colour representation nor request the opponent to file a translation of the colour indications No clear representation R 80(2), R 18(2) IR If the representation on file is not clear, the Office may ask for a clearer one (StandL 208). 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 opposition will be rejected as inadmissible. Opposition Guidelines, Part 1 Status: March 2004 Page 36

37 Procedural matters: Admissibility - Notification VII. THE OPPONENT/ENTITLEMENT 1. Opponent Art. 42(1) CTMR R 15(2)(c)(i) IR The opponent can either be a natural person or a legal person. In order to be able to identify the opponent, there should at least be an indication of his name and an indication of where he can be reached. 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, StandL 208 must be sent asking the opponent to give the particulars of his domicile. When examining if the opponent is clearly identified, attention should be given to the nature of the opponent, i.e. natural or legal person. If it is unclear whether the opponent is a natural or a legal person, or when the type of legal person (for example GmbH, KG, SA, Ltd) is not indicated, StandL 208 is to be sent. 2. Entitlement Art. 42(1) CTMR, R 15(2)(c)(i-iv) IR The opponent has to indicate his entitlement to oppose. In other words, he should indicate in what capacity he acts, if he is the owner, an authorised licensee or a person authorised under national law Capacity - If the notice of opposition is based on the grounds of Article 8(1) or 8(5) CTMR and thus on trade mark registrations or applications, 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's 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, he is entitled to file an opposition, Opposition Guidelines, Part 1 Status: March 2004 Page 37

38 Procedural matters: Admissibility - Notification irrespective of his country of origin. Even though it is mandatory to indicate the entitlement in the notice of opposition, as in the majority of cases the opposition is filed by the owner, if nothing is indicated the opponent should be invited to specify his entitlement with StandL If nothing is indicated but a certificate is attached confirming the opponent as owner, it is not necessary to send StandL 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 (2.2.1) and oppositions based on national trade mark registrations (or applications) (2.2.2) Oppositions based on an earlier CTM Art. 17(6), (7) CTMR, R 15(2)(c)(iii) IR An opposition based on Community registrations or applications may be entered by the successor in title of a CTM(A) only if the conditions set out in Article 17(6) of the CTMR are met, namely, only if the opponent has filed a request for the registration of the transfer when the opposition is filed. (According to Article 17(7) CTMR, where there are time limits to be observed vis-à-vis the Office, the successor in title may make the corresponding statements to the Office once the request for registration of the transfer has been received by the Office.) In the absence of such a request, the opposition is inadmissible. Rule 15(2)(c) IR indicates that where the opposition is entered by the successor in title to the registered proprietor of a Community trade mark who has not yet been registered as new proprietor, the opposition notice shall contain an indication to that effect, the name and address of the opponent, and an indication of the date on which the application for registration of the new proprietor was received by the Office or, when this information is not available, was sent to the Office. It is up to the opponent to provide this information, and it will not be checked by the examiner when doing the admissibility check. Only when the opponent in the explanation of his opposition mentions that he is the new owner (or similar terms), StandL 208 has to be sent asking 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 Opposition Guidelines, Part 1 Status: March 2004 Page 38

39 Procedural matters: Admissibility - Notification 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 on the necessity of registration of 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 appear in the relevant register as the owner, the Office nevertheless accepts the opposition as valid with A as opponent, even though he 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, if so indicated in the notice of opposition, that he opposes in his capacity as licensee.) 3. Multiple opponents R 75(1) IR, BoA, Emultech R 623/ In some case 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 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 fulfill one of the two requirements mentioned above, they are to be asked to indicate their relationship (co-ownership or owner/licensee) or to indicate one of the multiple opponents as the only opponent: StandL 208 is to be sent Co-owners Co-ownership exists when one mark (or right) is owned by more than one person. In principle, if the opponents confirm that all earlier rights are registered in the names of all (co-owned), the opposition can proceed with all of them as opponents. However, if the opponents inform the Office that, for example, Company A B.V. owns five of the earlier rights and Company A PLC another five, they will have to indicate with whom the opposition will continue. As a consequence, five out Opposition Guidelines, Part 1 Status: March 2004 Page 39

40 Procedural matters: Admissibility - Notification of the ten earlier rights will not be taken into account. If the opponents do not respond appropriately within the two-month period set in StandL 208, the opposition will be rejected as inadmissible. Acceptable Earlier trade marks Owner A/B A A A A Earlier trade marks Owner A/B A/C A A A The second combination is acceptable only if at least A is one of the opponents. Not acceptable Earlier trade marks Owner A A B B B The opponents will have to be asked to indicate if they want to continue the proceedings with A or B as an opponent. (StandL 208). Earlier trade marks Owner 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. (StandL 208). Earlier trade marks Owner A/B B/C A A A The opponents will have to be asked to continue the opposition either as multiple opponents 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. (StandL 208) 3.2. 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 Guidelines, Part 1 Status: March 2004 Page 40

41 Procedural matters: Admissibility - Notification 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 him in the case. In the following example the opposition is acceptable with A, B and C as multiple opponents: Earlier trade marks Owner A A A Licensees B C None On the contrary, in the following case, although B is accepted as multiple opponent as licensee for earlier mark 1, he cannot be accepted as multiple opponent as owner of earlier mark 3. The Office will send StandL 208 asking the opponents to indicate if they want to continue the opposition with A or with B as an opponent. If the opponents do not reply, the opposition is inadmissible. Earlier trade marks Owner A A B Licensees B C A 4. Evidence In cases where the opposition is based on earlier registered marks the most common means to furnish evidence of co-ownership is to submit a copy of the registration certificate. If the opposition is based on several earlier marks/rights but the opponents have already filed evidence of co-ownership of one earlier registered mark, the opponents will still be required to confirm the ownership of the other earlier rights by sending StandL 208. As at this stage of the opposition proceedings the opponents are not obliged to file evidence of their earlier marks/rights, a statement confirming their capacity to file an opposition together will be considered sufficient for admissibility purposes. Opposition Guidelines, Part 1 Status: March 2004 Page 41

42 Procedural matters: Admissibility - Notification VIII. OPPOSITION NOTICE NOT SIGNED R 79(a) IR The opposition notice must have been signed by the opponent or, if it is submitted by a representative, by the representative. If the signature is missing, StandL 208 must be sent. The opponent or his representative is given two months to remedy. Opposition Guidelines, Part 1 Status: March 2004 Page 42

43 Procedural matters: Admissibility - Notification IX. EXTENT OF THE OPPOSITION The description of the goods and services against which the opposition is directed has to be examined to see if it is sufficiently clear. If this is not the case, StandL 208 has to be sent. The basic rule is that is has to be absolutely clear against which goods / services the opposition is directed. If the opponent indicates that his opposition is directed against all the goods of the CTM application, there are no doubts and the opposition is admissible in this respect. If there is no indication at all, we assume that the opposition is directed against all the goods and services of the CTM application and the opposition is admissible. However, if the opponent indicates that the opposition is only directed against part of the g&s of the CTM application (box 91 of the OHIM opposition form), he will have to identify these goods. If he does not do so, either in the notice of opposition or in the explanation, StandL 208 must be sent. If the deficiency is not remedied within the deadline given, the opposition will be rejected as inadmissible. There are cases where, in reply to our letter asking him to identify exactly which of the goods and services he opposes, the opponent indicates all the g&s which the CTM application is applied for. In such cases, we cannot accept this indication as valid. 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 his opposition in this respect and cannot extend its scope after the opposition period of three months. In these rare cases, we send a 2 nd letter to the opponent explaining this legal situation and giving two further months for filing an indication which does not contain all the goods and services. If the opponent does not respond appropriately to this request, the opposition will be rejected as inadmissible. 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 directed against trousers and the CTM application is filed for clothing). There is no need to send StandL 208. 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 asked by sending StandL 208. Opposition Guidelines, Part 1 Status: March 2004 Page 43

44 Procedural matters: Admissibility - Notification X. REPRESENTATION Art 88, 89 CTMR In principle, neither the opponent nor the applicant need to be represented before the Office. However, parties to proceedings before the Office with no domicile or seat or establishment within the EU cannot deal with the Office directly and need to be represented by a person qualified to act as representative before the Office. If a natural person deals with the opposition or application himself, the Office communicates directly with this person. If a legal person deals with the opposition or application, this is normally done by an employee of the legal person. Who this person may be depends on the national law that governs the company. The entitlement to act on behalf of the party to the proceedings depends on the law applicable to that party and will be governed by contract law or company law, etc. Entitlement to act is not examined by the Opposition Division, so no evidence that the person signing a notice of opposition is actually authorised to do so under national law is required. However, if the other party contests the capacity of the person to act on behalf of the company, further explanations or clarifications will be required. A-staff will deal with these cases. If the natural or legal person wants or needs to be represented, he can choose from two categories of persons that may act as representatives, namely legal practitioners and professional representatives. If the opponent/applicant has designated a representative, the Office must always communicate with this representative. 1. Legal effect of notifications to or by the representative R 77 IR Any notification of the Office 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. 2. Conflict of interest Art. 79 CTMR It is not possible for the same representative to represent both the applicant and the opponent because there would be a conflict of interests. In this case one of the parties will have to choose a different representative. A-staff will deal with these cases. An exception to this rule can be made in cases where the proceedings are Opposition Guidelines, Part 1 Status: March 2004 Page 44

45 Procedural matters: Admissibility - Notification concluded with a friendly settlement before the adversarial part and before the cooling-off period of the proceedings at the very beginning of the procedure (admissibility stage). Only in these rare cases is it accepted that the same representative represents the interests of both parties. However, even then it must be obvious that there are no contradictory interests of the parties. If that should be the case, the parties will be invited to designate their respective representatives. R 75 IR 3. Multiple representatives, common representative 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 opponent first named in the opposition notice shall be considered to be the common representative. However, if one of the opponents is obliged to appoint a professional representative (because he is from outside the European Union), such representative shall be considered to be the common representative, unless the opponent first named in the opposition notice has appointed a professional representative. R 76(8) IR Where there is more than one opponent/applicant, the representative of the person named first shall be the common representative of all these persons. If the person first named has not appointed a professional representative and one of those persons is obliged to appoint a professional representative and has done so, such representative shall be considered to be the common representative for all these persons. 4. Change of representative R 76 IR During the oppositions proceedings the opponent s and the applicant s representative may change. Opposition Guidelines, Part 1 Status: March 2004 Page 45

46 Procedural matters: Admissibility - Notification XI. AUTHORISATION Pursuant to Articles 88 and 89 CTMR and Rule 76 CTMIR representatives must file a written authorisation for entry into the file, either as an individual or as a general authorisation. Details are set out in Part A, Chapter 5, of the Guidelines for Proceedings before the Office. Hereinafter, only the particularities for oppositions proceedings are set out. If a natural person represents himself, there is no need for an authorisation. If a legal person represents itself, the person entitled to represent the company in legal acts manager, CEO, - may represent the company. Furthermore, a legal entity may authorise any of its employees to act on its behalf before the Office. However, in this case a written authorisation, authorising this employee to represent the legal person must be submitted. It is the national law that determines who can represent a legal entity. The Opposition Division does not check if the person who has signed the notice of opposition (or the authorisation) was entitled to do so. Only if the applicant contests the capacity of the person who has signed on behalf of the company, the opponent will be asked to clarify. A-staff will deal with these cases. R 76(2) IR A general authorisation entitles the representative to represent the applicant/opponent in all current and future proceedings before the Office, including opposition proceedings. An individual authorisation entitles the representative to represent the applicant/opponent only in the indicated proceedings. This means that an individual authorisation to register a CTM allows the representative to act in the name of the applicant in all proceedings concerning the registration of this mark, e.g. to file the application and to defend it in opposition proceedings. However, this individual authorisation does not entitle the representative to file an opposition against another CTMA, even if the opposition is based on the earlier CTM for which he had an individual authorisation. 1. Authorisation for multiple opponents If an opposition is filed by multiple opponents (for example co-owners), it suffices that the authorisation is only signed by one of the opponents. Rule 75 IR mentions that if the opponents do not name a common representative, the opponent who is mentioned first is considered to be the Opposition Guidelines, Part 1 Status: March 2004 Page 46

47 Procedural matters: Admissibility - Notification representative of all the opponents. As a common representative he can authorise a professional representative to represent all opponents. 2. Extension of time limits R 76(4), R 71(1), (2) IR An extension of the time limit to file an authorisation is possible under the condition that the extension of the time limit is properly justified. The time limit of StandL 2.10 (two months to appoint a new representative) will not be extended. Opposition Guidelines, Part 1 Status: March 2004 Page 47

48 Procedural matters: Admissibility - Notification B. NOTIFICATION OF THE OPPOSITION I. NOTIFICATION R 19(1)IR After the expiry of the opposition period and as soon as the Office finds that the notice of opposition is admissible, the Office communicates it to the applicant. According to our current experience, the notification is usually not done before three weeks after the expiry of the opposition period, taking into account that most part of the oppositions are received within the last five days of the opposition period and that the Office needs time to key the opposition into Euromarc, to do the admissibility check etc. If the notice of opposition is filed at an early stage of the opposition period and the admissibility check is completed even before the expiry of the three-month period, the Office will however wait two or three weeks after the expiry of the opposition period to notify the opposition. This time is needed to check if other oppositions against the same CTM application have been filed. The notification is done by using StandL 211 and 212. Two different versions are available depending on whether the opponent will be given two months after the end of the cooling off period to complete his file (Version A) or not (Version B). It should be noted that Version B will only be sent when the opponent expressly stated that the opposition is complete. As this is rarely the case, the common practice is to send Version A. The StandL 212 to the opponent includes an annex that advises him about the nature of the information he should submit to the Office to substantiate the earlier rights that he claims. In both versions the cooling-off period will be set to expire two months from the notification. The exact day of the expiry will be indicated, as is currently the case. This day 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. Version A File not complete (six months) R 16(3), 20(2) IR The opponent will be given a period of two months after the expiry of the cooling-off period to complete his file by submitting (any additional) facts, evidence or arguments in accordance with Rule 16(3) and Rule 20(2) IR. In actual practice, the period for submitting such additional material will be set at four months from the date of notification. Therefore, opponents should be aware that the period for submitting such additional material is not a period of two months beginning after the cooling-off period has expired, but a period of four months from the notification. The difference will be of significance when the cooling-off period itself expires on a day when the Office is not open. Opposition Guidelines, Part 1 Status: March 2004 Page 48

49 Procedural matters: Admissibility - Notification The request to the opponent is a general invitation to complete the file within the meaning of Rule 16(3) and Rule 20(2) of the Implementing Regulation. The Office will not indicate the nature and type of the material necessary for a completion of the file. Rather, it will be for the opponent to decide what he 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, which is annexed to StandL 212 (Annex 3), may be used by opponents as a check-list in preparing their oppositions. R 19(1), 20(2) IR The applicant will be given an additional period of two months for replying to the opposition in accordance with Rule 19(1) and Rule 20(2) IR. Rather than setting a separate period of two months (two months for the cooling-off period, two months for completing the opposition, two months for replying), the period for replying to the opposition will be set at six months from the day of notification of the opposition. When the opponent completes his opposition any time after the notification and before the expiry of the four months available to him, the additional material will be forwarded to the applicant without any change in the period 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 period 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 period 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 period of two months for preparing his reply. Version B complete file (four months) There may be situations when the opponent wishes to accelerate the proceedings and may not need the two months for submitting additional material. In these cases, the opponent should submit all material together with the notice of opposition or shortly thereafter, and in any event before the opposition is formally notified to the applicant., If the admissibility check reveals deficiencies that have to be remedied, the opponent will be able to complete his file within the term available to him for remedying the deficiencies. Only when there is an express statement from the opponent to the effect that the opposition is complete and that he renounces to the period of time to complete his opposition, the opponent will not be given an additional period and the notification of the opposition to the applicant will state that the period for replying to the opposition expires four months from the notification of the opposition (two months cooling-off period, two months for the reply). Opposition Guidelines, Part 1 Status: March 2004 Page 49

50 Procedural matters: Admissibility - Notification II. NOTIFICATION - SPECIAL ISSUES 1. Earlier rights that are not earlier within the meaning of Article (8)(2) CTMR Art. 8(2), Art. 42(1) CTMR Sometimes an opposition is based on one or more marks or other rights that are not earlier than the CTM application, within the meaning of Article 8(2), because they were applied for/registered later than the CTM application. Two cases have to be distinguished: 1.1. Opposition only based on a mark/ right that is not earlier In such cases and if the opposition is admissible a decision on substance has to be taken. The absence of any prior rights will result in the rejection of the opposition. As in these cases the outcome of the decision is obvious, the Office will avoid expensive and time-consuming exchanges of observations between the parties and will decide on the matter as soon as possible. The practice in these cases is to notify the opposition as usual. However, in the standard letter the parties will be informed that the Office will take a decision after the expiry of the cooling-off period as the earlier right(s) on which the opposition is/are based are not actually earlier rights within the meaning of Article 8(2) CTMR. No time limit to file observations will be granted. However, the opponent will have the two months of the cooling off period to react to the letter. The opponent may choose to withdraw the opposition during the cooling off period or he may want to put forward arguments contesting the findings. The following paragraph should be added to StandL 211, 212: Please note that the examination of the notice of opposition has shown that the mark on which the opposition is based is not actually an earlier right within the sense of Article 8(2) CTMR. Consequently the Office will issue a decision rejecting the opposition as unfounded as soon as the cooling-off period expires Opposition based on earlier and non-earlier marks/rights Where the opposition is based on more than one right and one or more are earlier, and some or more are not, the Office will notify the opposition as usual and no mention will be made of the fact that one or more marks/rights are not earlier. The issue will then be dealt with in the decision. Opposition Guidelines, Part 1 Status: March 2004 Page 50

51 Procedural matters: Admissibility - Notification 2. Multiple oppositions When there are multiple oppositions against the same CTM application, it is the practice of the OD to notify the applicant of them all at once. However, if for reason of economy of proceedings, the Office decides not to notify them at the same time (e.g. in one opposition the completion of the admissibility check is delayed), when notifying the opposition to the applicant copies of the other oppositions must be included for information purposes. The attachment is limited to the notice itself without further documents. It must be assured that the correct opposition number is written at the top of each opposition notice. Otherwise the applicant could become confused as to the identification of the oppositions. 3. Some earlier right(s) will not be taken into account Art. 8(2) CTMR, R 18(1), R 18(2) IR If the opposition is based on several earlier rights and one of them will not be taken into account because it is inadmissible, the parties will have to be informed of this with the StandL 211 and 212. This might be the case for example: When the opponent has not clearly identified one earlier right; When the opponent did not submit the (colour) representation or the list of goods & services and did not remedy these deficiencies within the time limit given in StandL 208. The following paragraph should be added to StandL 211, 212: Please note that earlier trade mark / the earlier right (specify) on which the opposition is based will not be taken into account because (specify). R 20(6) IR, R 21(2) IR 4. Suspension According to Rule 20(6), the Office may suspend opposition proceedings where the opposition is based on a CTM application or national trade mark application. Therefore, the question of suspension in these cases is always a discretionary decision of the examiner in charge of the opposition. After having decided that an opposition must be suspended, a second and also discretionary question remains, namely at what point in time to suspend the proceedings. Opposition proceedings can be suspended before commencement of the Opposition Guidelines, Part 1 Status: March 2004 Page 51

52 Procedural matters: Admissibility - Notification adversarial part of the proceedings. In general, the opposition(s) will be suspended when the opposition is notified in order to save the cooling-off period for the time after the proceedings are resumed. This is done by adding a paragraph to StandL 211 and Notifications by mail Whenever the fax number of the opponent and applicant (or their representatives) is known the Office usually notifies the opposition by fax. However, there are some exceptions to this rule. For example, if the opposition is based on an earlier trade mark registered or applied for in colour, the opposition will be notified to the applicant by mail. The same applies, if for reasons of legibility the documents submitted by the opponent should not be sent by fax. In these cases an annotation in the file should be made. Furthermore, if there are more than three oppositions against the same CTMA, the practice is to notify them by mail, to make it easier for the applicant to identify the different documents belonging to the different oppositions. Opposition Guidelines, Part 1 Status: March 2004 Page 52

53 Procedural issues CHAPTER 2 - PROCEDURAL ISSUES I. OUTLINE OF THE PROCEEDINGS Opposition proceedings start with the filing of the notice of opposition. After examination of the opposition notice, and once it is found to be admissible, the applicant is notified of the opposition. The notification sets the deadlines for the proceedings. It starts with a period during which parties can negotiate an agreement (with or without any financial consequences), the so-called cooling-off period. Once this period has expired the adversarial part of the proceedings begins. The opponent is then allowed two more months to complete his file, i.e. to submit all evidence and observations he thinks necessary to make his case. After these two months, or once the submitted evidence and observations have been forwarded to him, the applicant has two months to reply to the opposition. The applicant has basically two possible ways to defend his application. He can question the validity of the earlier marks by filing a request for proof of use and he can file observations and evidence in order to convince the examiner that the opposition should fail. If the applicant only files evidence and observations, the opponent is given two months to comment on the submissions of the applicant and after these exchanges the opposition is normally ready for decision. If the applicant files evidence and observations, but also requests the opponent to prove that the earlier marks were used, there is generally one exchange more. The observations and the evidence of use submitted by the opponent are forwarded to the applicant, who will be given two months to comment. If he does so, his comments are forwarded to the opponent, who will consequently get an opportunity to file his final comments. After that the opposition is ready for decision. In some other cases it may also be necessary or useful to have 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 then up to the examiner to decide if another round should be given to the opponent. Opposition Guidelines, Part 1 Status: March 2004 Page 53

54 Procedural issues II. TRANSLATIONS / CHANGES OF LANGUAGE DURING OPPOSITION PROCEEDINGS 1. Translation of submissions other than the opposition notice This chapter deals with translation of submissions made by the parties during opposition proceedings. For information on language and translation of the notice of opposition see Chapter I.A.III above. Submissions of the parties in opposition proceedings have to be in the language of the opposition in order to be taken into account. For different submissions there are different rules to be applied. The general rule is Rule 96 IR. However there are two exceptions: Rule 17(2) IR for facts, evidence and arguments filed by the opponent and Rule 22(4) IR for evidence of use Translation of facts, evidence and arguments filed by the opponent to complete his file R 17(2) IR Rule 17(2) IR applies to the facts evidence and arguments in support of the opposition that the Office requests from the opponent in StandL 212, i.e. anything the opponent brings forward to complete his file in the four months after notification, such as certificates, observations etc. If these submissions are not in the language of the proceedings, they must be translated within the four-month period. (This is expressly stated in StandL 212.) Documents that have not been translated in this period are not taken into account Translation of observations R 96(1) There is no special rule for translations of documents drawn up by the applicant or opponent, either in reply to the notice of opposition or at a later stage in the proceedings. Consequently for these submissions Rule 96(1) IR applies. This means that the applicant or opponent has one month from the date of receipt by the Office to submit a translation of these documents that are in one of the languages of the Office, but not in the language of the proceedings. The Office does not request the parties to send a translation, it has to be sent on their own initiative. For example, the language of opposition is English and the applicant must file observations in reply to the notice of opposition by 26/06/2002. If on Opposition Guidelines, Part 1 Status: March 2004 Page 54

55 Procedural issues 18/05/2002 he files his observations in reply to the opposition in German, he must file his translation by 18/06/2002. If he does not do so, the observations are not taken into account. However, as his deadline only finishes on 26/06/2002, if he hasn't filed a translation by 18/06/2002, he can still validly file documents till 26/06/2002. If he then files the translations before the end of the period we consider the translation as valid observations filed in the language of the proceedings within the set period. This is different when the applicant files observations in the wrong language on 26/06/2002. If the applicant does not thereafter file a translation within one month, that is by 26/07/2002, the documents are not taken into account. Thus, if documents are received in the wrong language the end of the set period or of the one month after filing must be awaited to see if they can be accepted Translation of documents other than observations R 96(2) IR For all evidence other than the evidence that the opponent must provide within the four-month period to substantiate his opposition (see above under 1.1), Rule 96(2) applies. This evidence concerns all documents other than observations, filed after the four-month period for the opponent to complete his file. Examples of this type of evidence are catalogues or magazine articles that are submitted by the applicant together with his observations in reply to the opposition. For this evidence the parties are not under an automatic obligation to furnish a translation. Rather, the Office must decide whether or not to expressly invite the party concerned to do so. The Office exercises its discretion as follows (this practice corresponds mutatis mutandis to that concerning evidence of use; see below under 1.4): In principle the Office does not ex officio require a translation. Yet it is vital that the party to whom the documents are addressed should be able to understand the meaning of their substantive content. If this is doubtful or contested by the party-addressee, the Office requires a translation within a specified period. Together with the invitation to furnish a translation, the Office will draw the attention of the party concerned to the following. Opposition Guidelines, Part 1 Status: March 2004 Page 55

56 Procedural issues It is up to the party to evaluate whether a complete translation of all the evidence submitted may be necessary. However, the documents in question will only be taken into account in so far as a translation is submitted or in so far as the documents are self-explanatory, regardless of their word components. Example: In the case of a national court decision it may be sufficient to translate those parts only that are relevant for the opposition proceedings Proof of use R 22(4) IR The language regime governing proof of use is set out in Rule 22(4) IR. According to this provision, the means of evidence may be submitted in a language different from the language of the proceedings. However, the Office may require the opponent to submit a translation of the evidence into the language of the proceedings within a specified period. Therefore, it is at the discretion of the Office whether or not to request a translation. In exercising this discretion, the Opposition Division 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 requires a translation within a specified period. It is then up to the opponent to evaluate whether a complete translation of all the evidence submitted may be necessary. See under 1.3. above. However, the means of evidence will only be taken into account in so far as a translation is submitted or in so far as the means of evidence are self-explanatory, regardless of their word components. 2. Change of language during opposition proceedings Art 115(7) CTMR, R 17(3) IR According to Article 115(7) CTMR, the parties to opposition proceedings may agree to change the procedural language and choose any official language of the European Union for that purpose. Rule 17(3) IR sets forth the conditions under which such a change of language may occur. 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 is not accepted by the Office. When, before the start of the adversarial part of the proceedings, the opponent and the applicant agree to change the language of the proceedings, Rule 17(3) IR requires the opponent to file a translation of the notice of opposition in that Opposition Guidelines, Part 1 Status: March 2004 Page 56

57 Procedural issues language. He has to do so within one month of the expiry of the cooling-off period. Failure to file such a translation leads to the rejection of the opposition. Opposition Guidelines, Part 1 Status: March 2004 Page 57

58 Procedural issues III. OBSERVATIONS BY THIRD PARTIES Art. 41 CTMR According to Article 41 CTMR, third parties can make observations explaining why the CTM application the trade mark should not be registered, based on one of the absolute grounds of Article 7 CTMR. The observations are dealt with by the examiner in charge with the examination on absolute grounds. When can such observations be made? Article 41 only mentions Following the publication of the Community trade mark application. Consequently, these observations can be made until the opposition proceedings are concluded. Com No 01/00 of 25/02/00, OJ 2000, 479, BoA 735/2000-3, Serie A As anybody may file third parties observations, it can also be the opponent. However, if he does so, he should do so in a manner that leaves no doubt. According to the Communication of the President of the Office of 25 February 2000, the observations must be presented in a separate submission. However, a decision of the Boards of Appeal establishes that 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 he wishes to make observations under Article 41 CTMR they will be dealt with, even if they are not made in a separate submission. However, if in his observations the opponent argues that the CTM application is weak and should have been refused under Article 7 CTMR, without any reference to the contents of Article 41 CTMR, this argument will only be taken into account as an argument under Article 8 CTMR. It is not regarded as observations by third parties under Article 41 CTMR. The observations are dealt with by the examiner responsible for the file. When an opponent makes third party observations, the examiner will consider if the observations raise serious doubts as to the registrability of the CTMA, or if they will only be sent to the applicant for information. If the observations raise serious doubts, the examiner must suspend the opposition 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), or do not affect the contested goods or services, the opposition proceedings should not be suspended. Opposition Guidelines, Part 1 Status: March 2004 Page 58

59 Procedural issues IV. AMENDMENT OF APPLICATIONS / CORRECTION OF MISTAKES 1. Amendment of applications Art. 44 CTMR According to Article 44(2) CTMR, a CTM application may be amended, upon request of the applicant, only by correcting the name and address of the applicant, errors of wording or of copying, or obvious mistakes, provided that such correction does not substantially change the trade mark or extend the list of goods or services. Where the amendments affect the representation of the trade mark or the list of goods or services and are made after publication of the application, the trade mark application shall be published as amended. R 13 IR An application for amendment of the application under Article 44 CTMR must contain all relevant data to identify the CTM application and the indication of the element of the application to be corrected or amended, and of course, that element in its corrected or amended version. ATMDD deals with changes of name and address. Such applications are not subject to the payment of a fee. Where the amendments affect the representation of the trade mark, the amendment is subject to the payment of a fee. Where the amendments affect the list of goods or services, the limitation is treated within the opposition proceedings. Such applications are not subject to the payment of a fee. 2. Correction of mistakes and errors in publications R 14 IR, Art. 42(2)CTMR Where the publication of the application contains a mistake or error attributable to the Office, the Office shall correct the mistake or error acting on its own initiative or at the request of the applicant. The request is not subject to the payment of a fee. 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 concerns an extension of the list of goods or services or the representation of the mark, a new opposition period is open. If oppositions were filed after the first publication of the CTMA, the opponents will have to be informed of the re-publication. The opponents that opposed the Opposition Guidelines, Part 1 Status: March 2004 Page 59

60 Procedural issues 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. Although it is only a remote possibility, it could be that a first publication opponent wishes to withdraw his opposition as a consequence of the republication. In this case the proceedings should be closed and the opposition fee should be refunded. (See chapter VI fees, 2.3) 3. Challenge proceedings against alteration of a CTM registration Art. 48 CTMR, R 25(4) IR Where a Community trade mark includes the name and address of the proprietor, the alteration thereof may be registered as long as the alteration does not substantially affect the identity of the trade mark as originally registered. According to Article 48(3) CTMR third parties whose rights may be affected by the alteration of a CTM registration may challenge the registration thereof within a period of three months following publication of the registration of the alteration. Where the registration of the alteration is challenged, the provisions on opposition contained in CTMR and IR shall apply mutatis mutandis (R 25(4) IR). As registered CTMs are concerned, it is the ATMDD that deals with these challenge proceedings. 4. Correction of mistakes in the opposition notice There are no special provisions in the Regulations on correction of mistakes in the notice of opposition. Applying Article 44(2) CTMR by analogy, obvious mistakes in the notice of opposition may be amended. When is a mistake is an obvious mistake? If it is unmistakably clear what the right indication should have been, the mistake can be deemed obvious and may be amended. For example, if the data of the opponent appear where the data of the representative should appear (or the other way around), this can be considered an obvious mistake. On the contrary, if the opponent in the notice of opposition is Dundee Ltd, but the opponent informs the Office later on in the proceedings that he made a mistake and that the real opponent is Dundee PLC, this cannot be considered an obvious mistake, as the OD could never have guessed that the opponent should have been Dundee PLC when examining the opposition. Consequently the mistake cannot be corrected. Opposition Guidelines, Part 1 Status: March 2004 Page 60

61 Procedural issues V. TIME LIMITS 1. General BoA 409/ AQUAPEL R Time limits are regarded as an essential tool for conducting orderly and reasonably swift proceedings. Furthermore, time limits are a matter of public policy and rigorous compliance with them is calculated to ensure clarity and legal certainty. They are not subject to the will or discretion of the parties and it is not for the parties to extend them at their own convenience. Therefore, time limits have to be strictly observed by the parties. Non-compliance with a given deadline will necessarily lead to the rejection of submissions made after its expiry, meaning that belated evidence, observations, or proof of use will not be taken into account, with all the adverse consequences this might entail for the party concerned. The same applies to supplementary materials attached only to the confirmation copy of a letter that was in itself sent on time (usually by fax), where this confirmation mail arrives after the expiry of the deadline. This is irrespective of whether such materials are specifically mentioned in the initial letter. Only time limits the length which is fixed by the Office may be extended, provided the requirements set in Rule 71, or when it comes to the cooling-off period in Rule 19, are fulfilled. (See paragraph 4 of this chapter.) Examples of time limits set by the Regulation are the three-month period to file opposition and the two months to remedy deficiencies under Rule 18(2) IR. An example of a time limit set by the Office is the period for filing an authorisation. R 71(1) IR The Office is obliged to set time limits no shorter than one month for persons who have their domicile or for companies that have their seat within the EU. A two-month time limit has to be given to persons who have their domicile or companies that have their seat outside the EU. The Office normally sets time limits of two months. However, in opposition proceedings there are also time limits of one month. For example, the time limits to provide evidence of timely payment of the opposition fee and payment of the surcharge in case of late receipt of payment, StandL 202. If the last day of a time limit is a day on which the Office is closed (see section 3 of this chapter, expiry of time limits), this date remains the date that is indicated in the communication of the Office. For example, a letter from the Opposition Guidelines, Part 1 Status: March 2004 Page 61

62 Procedural issues Office sent to an opponent on 14/09/1999 (Tuesday) with a time limit of two months will not change into 15/11/1999 (Monday) because 14/11/1999 is a Sunday, even though any document received by the Office on 15/11/1999 is deemed to be timely filed. 2. Calculation of time limits when sending notifications R 61(2)(d), 62, 70, 72 IR The Opposition Division sends documents to the parties by fax or by mail. The majority of the notifications and communications are sent by fax, either through Euromarc or manually. Some documents are sent by mail, for example documents containing representations in colour. When sent by mail, the party concerned does not receive the document immediately, but only after some days. Calculations are made in full months. Time limits expire in the relevant subsequent month on the day which has the same number as the day on which the communication was received. Thus, a period of two months granted with effect from 28 June will expire on 28 August. However where the relevant month has no day with the same number or where the day on which the letter was sent was the last day of the month the period in question shall expire on the last day of that month. It follows that a period of two months starting on 31 July expires on 30 September; a period of two months starting on 30 June expires on 31 August. R 62 IR Communications and notifications from the Opposition Division that are sent to the parties by mail (always sent by registered mail or courier service), are deemed to be delivered on the 10 th day following the day of posting. For technical reasons, the Euromarc system calculates the time limits differently. For any notification that sets a time limit which is sent to the parties by fax, the Euromarc system calculates the period of time + 1 day from the generation date of the letter: Date of generation of the letter + two months + 1 day. For example: Date of the letter 19/02/ months = 19/04/ day = 20/04/2002 For any notification which is sent by mail that sets a time limit, the Euromarc system calculates the period of time + 12 days from the generation date of the letter: Date of generation of the letter + two months + 12 days. For example: Date of the letter 19/02/ months = 19/04/ days Opposition Guidelines, Part 1 Status: March 2004 Page 62

63 Procedural issues = 01/05/2002 In the notification letters 211 and 212 this may sometimes lead to a somewhat strange result, but all notifications of oppositions are calculated according to the aforementioned principle. The dates in StandL 211 must be calculated as follows: By fax: Date of generation of the letter + two months + 1 day = first date (end of cooling off) (Date of notification letter 19/02/ months = 19/04/ day = 20/04/2002) Date of generation of the letter + four months + 1 day = third date (end of period of time for the opponent) (Date of notification letter 19/02/ months = 19/06/ day = 20/06/2002 Date of generation of the letter + six months + 1 day = fourth date (end of period of time for the applicant) (Date of notification letter 19/02/ months = 19/08/ day = 20/08/2002) By mail: Date of generation of the letter + two months + 12 days = first date (end of cooling off) (Date of notification letter 19/02/ months = 19/04/ days = 01/05/2002) Date of generation of the letter + four months + 12 days = third date (end of period of time for the opponent) (Date of notification letter 19/02/ months = 19/06/ days = 01/07/2002) Date of generation of the letter + six months + 12 days = fourth date (end of period of time for the applicant) (Date of notification letter 19/02/ months = 19/08/ days = 31/08/2002) However, this way of calculation only applies to deadlines that are set to either of the parties for the first time. New deadlines after a request for extension of the cooling off period have to be calculated on the basis of the old deadline + extension. Opposition Guidelines, Part 1 Status: March 2004 Page 63

64 Procedural issues For example, if the cooling off period expired on 20/04/2002 and an extension of two months is requested, the following dates are to be inserted in the extension letters: 20/04/ months = first date (new expiry date of cooling off) 20/04/ months = third date (end of period of time for the opponent) 20/04/ months = fourth date (end of period of time for the applicant) 3. Expiry of time limits R 72(1) IR, R 19(1) IR R 72(1) IR A period of time expires at midnight (24:00) of its last day. If the last day of a time limit for a party to submit a document is a day on which the Office is closed (a Saturday or a Sunday, a day the Office remains closed according to the decision of the President, or a day ordinary mail is not delivered in Alicante) a document is still validly filed if it is received on the first subsequent day on which the Office is open for receipt of documents. For example, when observations due on 15/08/xx (a public holiday on which the Office is closed), are received on 16/08/xx, they are filed within the time limit. The same goes for an opposition for which the three-month opposition period expires on Saturday or Sunday. It is considered on time if it was received on the following Monday. If the last day of a time limit is a national holiday in the Member State where the party has its domicile or establishment, but this is not a holiday for the Office, the time limit still expires on that last day, regardless of the fact that this day is a holiday for one or both parties. 4. Extension of time limits An extension will only be possible if (a) the relevant request is made before the expiry of the original term and (b) it is appropriate in the circumstances, or the other party agrees with it. If a request for extension is received by the Office after the expiry of the period of time, StandL 215 a/b or 226 a/b have to be sent. Time limits expressly provided for by the Regulations cannot be extended. For example, the time limit for the opponent to send in the list of goods and services upon invitation within 2 months (Rule 15(2)(b), Rule 18(2) IR) (see detailed information below). For an extension of extendable time limits, no justification will have to be given, as long as it is requested by both parties. In this case StandL 224a/225a are Opposition Guidelines, Part 1 Status: March 2004 Page 64

65 Procedural issues sent. If only one party requests the extension, this request has to be filed by the party concerned. For example, if the applicant has to file observations in reply to the notice of opposition, it can only be the applicant who asks for the extension. In this case a justification has to be given. If it is the applicant who asks for the extension, StandL 225 a/b have to be sent. If it is the opponent, StandL 224 a/b. If no justification is given for the request, it will be rejected: StandL 226 a/b will have to be sent. Finally, extensions of time limits may also be given for periods that are not full months Non-extendable and extendable time limits R 71(1) IR Art. 42(1) CTMR Art. 42(3) CTMR Art. 8(3,4) FR R 18(2) IR R 71(1)IR Time limits length of which is set by the Regulation cannot be extended. Nonextendable time limits are: The three month opposition period to file opposition. The three month period to pay the opposition fee. The one month period to pay the surcharge. The two month time limit to remedy deficiencies according to Rule 18(2) IR. Extendable time limits are time limits that according to the Regulations are to be specified by the Office, for example the time limit to submit observations in reply to the notice of opposition Request for extension R 71(1), 79, 80(3,4), 82(3,4), 96(1) IR 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. - The request has to be signed. - The original time limit must not have expired already. - Language regime: 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 - Grounds/justification: In accordance with Rule 71(1), the Office may grant an extension when this is appropriate under the circumstances. It is the party requesting the extension that has to put forward the appropriate circumstances. The evaluation of these circumstances is made by the Office on a case by case basis, taking into account not only the justification given in the request, but also any other relevant factors, such as the number of Opposition Guidelines, Part 1 Status: March 2004 Page 65

66 Procedural issues extensions already granted, the interest of the other party, etc. In general, mere declarations stating that an additional period is needed (the consequence) cannot be considered as valid justifications. It has to be reasonably explained why a period of time was insufficient to comply with the Office s request (reason). Although the practice of the Opposition Division is a flexible one, the following examples are deemed insufficient to justify an extension, as they only state the consequence: An extension is needed, The opponent/applicant has not yet provided instructions or is not available or More time is requested to gather the evidence requested. Examples of justifications that can be accepted (where a reason is given): Evidence is being gathered from distribution channels in several Member States/all our licensees/our suppliers, As there have been last minute discussions with the other party, the observations/evidence have not yet been completed, The parties started negotiations or the lawyer who is handling this file is recovering from a serious illness. R 71(2) IR If the parties jointly ask for an extension of a time limit, they do not need to indicate any grounds. Conditions for granting a further extension The Regulations do not put any limit to the number and duration of the extensions that can be granted by the Office. Nevertheless after having extended a time limit once at the request of one party, the party will need to indicate some new grounds or a further explanation when asking for another extension. In addition, the Office always has the possibility of subjecting the extension to the agreement of the other party (R 71(2) IR). Since this option is time consuming, it is not frequently used. The Office will refuse to extend a time limit when it is not appropriate under the circumstances (R 71(1) IR), see above. Interpretation of a request for extension A request for extension of a time limit may be read in a favourable way for the party requiring it. E.g. A late request to extend the cooling off period made after the expiry of the cooling-off period, can be considered to be a request for suspension on the basis of on-going negotiations between the parties. 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. E.g. A request to extend a time limit without any Opposition Guidelines, Part 1 Status: March 2004 Page 66

67 Procedural issues justification is received by the Office 20 days before the end of the period to file observations, but it was not dealt with by the Opposition Division 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 his request, in this case 20 days. When sending StandL 215a/b refusing the extension, the content will have to be adapted. This practice is based on the rules of fair administration Extension of the cooling off period An extension of the cooling off period has to be asked for by both parties, either in a joint request or in two separate requests. It is not necessary to state a reason for the extension. Unless a different period of time is requested, extensions of the cooling off period are granted for 2 months. StandL 214 a/b have to be sent. To extend the cooling-off period the following is necessary: R 19(2), 96(1) IR, Art. 115(5, 6) CTMR -A signed request from both parties. It may either take the form of two separate requests or one joint request. - In the language of the proceedings. The request has to be either in the language of the proceedings or translated into that language. A translation can be filed within one month of filing. The Office does not send any letter requesting a translation of the request for extension. - Request filed on or before the expiry of the cooling-off period. If one party files the request within, but the other after expiry of the cooling-off period, the extension is to be refused. Any request filed after the expiry of the cooling-off by both parties in the correct language will have to be rejected. However, if it is clear that the parties meant to ask for an extension of a time limit or a suspension of the proceedings, it may be interpreted and accepted as such. R 19(2) IR For the extension of the cooling-off period, the parties do not need to indicate any grounds at all. Priority has to be given to answering requests for extension of the cooling-off period. The parties should be informed as soon as possible whether or not the Office has accepted their request. If the request is refused, the time limits fixed in the notification remain unchanged. If the above mentioned conditions are fulfilled, StandL 214a/b have to be sent. If not, StandL 215a/b. Opposition Guidelines, Part 1 Status: March 2004 Page 67

68 Procedural issues If an extension of the cooling-off period is refused, the parties can always ask for an extension of a time limit or for a suspension of the proceedings Calculation of time limits for the extension of the cooling off Deadlines after a request for extension of the cooling off period have to be calculated on the basis of the old deadline + extension. For example, if the cooling off period expired on 20/04/2002 and an extension of two months is requested, the following dates are to be inserted in the extension letters: 20/04/ months = first date (new expiry date of cooling off) 20/04/ months = third date (end of period of time for the opponent) 20/04/ months = fourth date (end of period of time for the applicant) Problems solved R 19(2) IR Number of extensions/ Duration Unless the parties ask for a specific number of months, the cooling-off period will be extended by two months. The maximum number of months that can be granted per request is six months. Although there is no limitation in the Regulations about the number of the extensions that the parties can request, if there are interests of third parties involved, the parties may be invited to give some clarifications when yet another extension of the cooling off period is requested, or even may be given a final extension. A request by both parties does not necessarily have to be for a period of two months. E.g. a request for 45 days or until a specified date is acceptable. If the requests are for different periods of time If the requests do not refer to the same period of time, e.g. one party asks for an extension of two months, the other for three, the cooling off period is to be extended by the shorter of the two periods. The request is not signed R 79 IR If one of the requests is not signed, first it has to be checked if a signed Opposition Guidelines, Part 1 Status: March 2004 Page 68

69 Procedural issues request was received later. Sometimes parties forget to sign but realise this after having sent it, sign and send it again. A joint request has to be signed by both parties and to be received within the cooling-off period. A request signed by one of the representatives who assures the Office that the other party agrees to the extension of the cooling-off period is not acceptable. Both parties will have to sign. If the signature of one of the parties is missing, the extension is to be rejected. Opposition Guidelines, Part 1 Status: March 2004 Page 69

70 Procedural issues VI. FEES (REFUNDS) 1. Fee refunds / definitive payments When an opposition closes without a decision, it depends on the respective circumstances whether or not the opposition fee will be refunded Late payment/opposition is not duly entered Art. 42(3) CTMR Art. 9(1) FR If an opposition is deemed as not entered because of late payment, the opposition fee must be refunded to the opponent. If a surcharge has been charged, then it must also be refunded CTMA withdrawn before the end of the cooling off period R 19(3) IR If the applicant withdraws his CTM application (or all those goods and services against the opposition is directed) before or during the cooling off period, the opposition fee must be refunded Opposition withdrawn due to restriction of CTMA within the cooling off period If a link can be established between the withdrawal of the opposition and the restriction of the CTMA in the cooling off period, the opposition fee is refunded. As the link is not always obvious, in the following cases the opponent will also get his money back When the letter withdrawing the opposition was received by the Office before the Office had sent StandL. 222a letter to the opponent but after the applicant's letter limiting the CTMA was received by the Office. R 19(3) IR In this case, even if the opponent s letter does not make a reference to the limitation, it is the practice of the Office to refund the opposition fee. There are two reasons for this. First of all it is assumed that there is a link between the limitation of the CTMA and the withdrawal of the opposition, and secondly the opponent should not be punished for submitting the withdrawal before the OD has sent StandL 222a, giving the opponent two months to decide whether he wants to proceed with the opposition or not When the letter withdrawing the opposition was received by the Office before the applicant s letter limiting the CTMA. Opposition Guidelines, Part 1 Status: March 2004 Page 70

71 Procedural issues R 19(3) IR In this case, the necessary link between the withdrawal and the limitation is missing, therefore, the opposition fee will not be refunded. However, in instances where there is some evidence that there is a link between a limitation and withdrawal the opposition fee will be refunded. This will have to be evaluated on a case by case basis. A good example would be the case where at least in one of the two letters received from the parties a reference is made to the content of the other letter, e.g. the opposition is withdrawn because of the limitation of the goods and services When the letter withdrawing the opposition was received by the Office after expiry of the two-month period set in StandL 222a If the opponent withdraws his opposition after the expiry of this time period he does not get the fee back. However, if the cooling-off period is still running (because it has been extended) at the time of the expiry of the period for the opponent to inform the Office whether he maintains his opposition or not (the opponent s reply to StandL 222a), the opponent may still withdraw his opposition by the end of the cooling off period and get a refund of his opposition fee. This exception includes the following situations: R 19(3) IR i) the opponent does not reply to StandL 222a but subsequently withdraws his opposition within the cooling-off period, and ii) the opponent responds to StandL 222a by maintaining his opposition, but nevertheless withdraws the opposition still within the cooling-off period Opposition withdrawn before the end of the cooling-off period NOT due to a restriction R 19(3) IR If the opponent withdraws his opposition before the end of the cooling-off period without any restriction of the application the Office neither refunds the opposition fee nor takes a decision on costs Opposition rejected as deemed inadmissible R 18 IR In cases where the opposition is rejected as inadmissible, the Office does NOT refund the opposition fee, but instead passes the opposition to a definitive payment status in Euromarc Agreement between parties before commencement Opposition Guidelines, Part 1 Status: March 2004 Page 71

72 Procedural issues This case is directly linked to the Euromarc status of the same name. The opposition should be put into status 250=Agreement Between Parties Before Commencement when the proceedings are ended by an agreement that does NOT mention either a withdrawal or limitation. Rule 19(3) only mentions the possibility of a refund of the opposition fee if there is either a withdrawal or a limitation of the CTMA. If the proceedings end by an agreement, but this agreement does not contain any mention of a withdrawal or limitation of the CTMA (e.g. We hereby terminate the proceedings because both parties have reached an agreement. ), then the opposition fee is NOT refunded as this situation is not contemplated in the IR as a reason for refunding the opposition fee and as it means that the CTMA remains alive. Thus, status 250 is a definitive payment status. 2. Special cases for refunding fees 2.1. Opposition and withdrawal arriving on the same date Due to the fact that a day is the smallest unit of time in opposition proceedings, in cases where a withdrawal is filed on the same day as the notice of opposition, the Office will deem the opposition and its withdrawal to have occurred at the virtual second before 0:00 h., and will thus consider the filing and withdrawal to cancel each other out at that time. In such cases, the Office refunds the opposition fee % refund of opposition fee in cases of multiple oppositions In certain special cases concerning multiple oppositions, it is possible to refund 50% of the opposition fee to an opponent if one of the oppositions proceeding was terminated by the rejection of the contested CTMA in parallel opposition proceedings. For example, if there are four oppositions A, B, C and D (opponents A, B, C, D) against CTMA X, and CTMA X is rejected due to opposition A, then opponents B, C and D have the possibility of receiving a 50% refund of the opposition fee. R 21 IR Where there are multiple oppositions and the CTM application is rejected due to one of the oppositions, this 50% refund of the opposition fee is only given if the other oppositions (B, C and D) have been suspended at an early stage of the proceedings because a preliminary examination revealed that CTMA X would probably be rejected in its entirety because of opposition A. At an early stage has been interpreted as before the expiry of the cooling-off period, thus before the status of definitive payment Refund after re-publication Opposition Guidelines, Part 1 Status: March 2004 Page 72

73 Procedural issues If after re-publication a first publication opponent wishes to withdraw his opposition as a consequence of the re-publication, the proceedings should be closed. As the Office made a mistake with the first publication, the opposition fee should be reimbursed. 3. Special cases for NOT refunding fees 3.1. Opposition is deemed not to be entered due to lack of authorisation of the representative of the EU-opponent and the opponent does not want to continue the proceedings. R 76(4) IR This is the one case where the opposition fee has to be kept by the Office notwithstanding the fact that the opposition is in either status 214=Final Decision - Opposition Not Duly Entered or 216=No Decision - Opposition Not Duly Entered. In this case, the opposition is deemed not to be entered according to Rule 76(4), which means due to the lack of authorisation of the representative of the EU-opponent and the unwillingness of the opponent to continue with the proceedings. These cases have to be handled as follows: 1) The opposition must be in status 218; the payment must be validated. 2) The opposition must be regeressed from Euromarc status 218 to Euromarc status 214 or 216, depending on the possible decision issued. 3) A clear and unconditional annotation must be written in the Annotation Card of Euromarc in order to ensure that the Opposition Fee is not refunded. 4) A mention of the no-refund is also to be specified either in the letter of closure or in the final decision to the opponent Mistaken refund of the opposition fee due to a wrong status There are some cases where the opposition fee has been mistakenly refunded due to the fact that the opposition had been put in the wrong status (in particular, when 254 letters were sent). If the opponent has a current account, the financial department automatically redebits this account when receiving from us the information about the mistake. In such cases we should send a letter to the opponent explaining the situation before informing the Accounting Department. Opposition Guidelines, Part 1 Status: March 2004 Page 73

74 Procedural issues Art. 41, 88 (2) CTMR, R 18, 19, 76(1) IR 3.3. CTMA rejected in parallel proceedings pursuant to Articles 41, 88(2) and Rule 76(4) during the opposition proceedings In cases where the application is rejected in accordance with Article 41 CTMR (observations from third parties), Article 88(2) CTMR (representation for non- EU applicants) and Rule 76(4) IR (authorisations), the opposition fee must not be refunded as none of these situations is contemplated in the IR as a reason for refunding the opposition fee. Opposition Guidelines, Part 1 Status: March 2004 Page 74

75 Procedural issues VII. RESTRICTIONS AND WITHDRAWALS 1. Restrictions and withdrawals of CTM applications Art. 44(1) CTMR The applicant may at any time withdraw his Community trade mark application or restrict the list of goods and services contained therein. When the applicant requests a restriction of the list of goods and services of the CTMA, he must indicate the goods and services he wants to be deleted from the list, or which goods and services are to be replaced by which other goods and services, it being understood that the latter must be narrower than the original goods and services. Therefore, it has first to be considered if the requested restriction is valid or if the restriction is actually an extension of the list of goods and services. A territorial restriction is not possible because of the unitary character of the CTM. Neither is a restriction that goes beyond the designated class acceptable. For example, according to the Nice Classification games are classified in class 28, whereas electronic computer games are classified in class 9. A request for restriction of games in class 28 to electronic computer games in class 9 is not acceptable, as electronic computer games were not covered by the original application. The restriction would thus be an extension and extensions are not acceptable. Furthermore, goods and services that were not covered by the original specification cannot be excluded. For instance, if the original specification covers cars in class 12 and the applicant wants to add not including petrol for cars, we do not accept this limitation, as petrol belongs to class 4 and was never encompassed by the original specification. If the restriction is not acceptable, StandL 262a/b have to be sent Class headings Com 4/03 of If a mark has been applied for the class headings, all goods or services that can be classified in this class are covered by the headings. Per definition any good in a certain class falls under one of the general indications in the class heading. Opposition Guidelines, Part 1 Status: March 2004 Page 75

76 Procedural issues This means that when the applicant requests to restrict his application (which consists of all the general indications of a class heading of a certain class) to certain specific goods in that same class, the restriction is acceptable. If the application contained only some of the general indications of the particular class heading, it must be verified if the specific goods or services come under these general indications. For example, if a CTMA has been applied for the class heading of class 10 (surgical, medical, dental and veterinary apparatus and instruments, artificial limbs eyes and teeth; orthopaedic articles; suture materials) and the applicant subsequently requests to limit his application to condoms the limitation is acceptable. If the CTMA has only been applied for the general indication dental apparatus and instruments this limitation would not be acceptable as condoms cannot be regarded as falling under this category Conditional restrictions The OD does not accept restrictions that are conditional. For example, if, in his observations in reply to the opposition, the applicant argues that the signs are dissimilar but should the examiner find them similar, he will limit the list of goods and services of the CTM application, this restriction is not acceptable. The applicant must be informed that the limitation must be express and unconditional Request for restriction only partly acceptable If a restriction is partly acceptable and partly unacceptable (for example because it constitutes an extension), the OD accepts the restriction for the acceptable part. However, before proceeding with the limitation, the applicant is informed of the part that cannot be accepted and is given two months to react (StandL 262a/b). The opponent must be sent a copy of the limitation and the reply of the Office to the applicant. If within the two months the applicant reacts with a corrected version that is acceptable, the limitation can be processed. On the other hand, if the applicant does not react, the limitation is only processed insofar as it is acceptable. If the opponent withdraws his opposition because of an unacceptable limitation (even before the OD has officially informed him), the withdrawal will not (yet) be taken into account, and will be dealt with only after the limitation has become acceptable. If the restriction is acceptable, a confirmation is sent to the applicant: StandL 217 in case of a restriction, StandL 216 in case of a withdrawal. Depending on the moment in the proceedings (and thus the status), the limitation or Opposition Guidelines, Part 1 Status: March 2004 Page 76

77 Procedural issues withdrawal has different consequences, described below Withdrawal or restriction before admissibility check is made When the CTMA is withdrawn or restricted to non-contested goods before notification of the opposition, the opposition proceedings are closed unless the opposition has already been rejected as inadmissible. In other words dealing with the withdrawal or restriction in these cases has priority over the admissibility. In the case of a restriction that may still include contested goods and services, an admissibility check is done and the opponent is invited to remedy any deficiencies at the same time as the restriction is notified. If the opposition is withdrawn, the opposition fee is refunded. This is the case even if irremediable deficiencies exist Restrictions and withdrawals of CTM applications before the end of the cooling-off period Restriction covers whole extent of the opposition / withdrawal R 19(1), (3)IR If it is absolutely clear that the restriction covers the whole extent of the opposition or when the CTMA is withdrawn, StandL 218 a/b are sent. The opponent is refunded the opposition fee. No decision on costs will be taken Restriction does not (seem to) cover the whole extent of the opposition If it is not completely clear that the restriction covers the whole extent of the opposition and when the restriction does not cover the whole extent of the opposition, StandL 222 a/b are sent. If the opponent then agrees to the restriction and withdraws his opposition, StandL 254 a/b are sent. The opponent is refunded the opposition fee. No decision on costs will be taken. The same applies when the opponent withdraws his opposition within the period of time given to reply to the restriction but after expiry of the cooling-off period as a consequence of a restriction made by the applicant during the cooling-off period. When the opposition is withdrawn after the time limit set by the 222 letter but before the end of the cooling-off period, the opposition fee is refunded. This refund is made in both the following cases: If no reply to StandL 222a is received at all, however, the opposition is subsequently withdrawn within the cooling-off period. Opposition Guidelines, Part 1 Status: March 2004 Page 77

78 Procedural issues If the opponent responds to StandL 222a by maintaining his opposition, however, he subsequently changes his mind and withdraws the opposition within the cooling-off period. However, when the opposition is withdrawn after the time limit set by the 222 letter and after the end of the cop, the opposition fee is not refunded. If a partly acceptable and partly unacceptable limitation was received by the Office within the cooling-off period and a corrected version is submitted after expiry of the cooling-off period, the opponent is still refunded the opposition fee upon withdrawal of the opposition as a consequence of the limitation Restrictions and withdrawals of CTM applications after the end of the cooling-off period Restriction covers whole extent of the opposition/withdrawal R 20(5) IR If it is absolutely clear that the restriction covers the whole extent of the opposition, StandL 250 a/b are sent. Unless the parties submit an agreement on costs, the Office will take a decision on costs Restriction does not (seem to) cover the whole extent of the opposition If it is not completely clear that the restriction covers the whole extent of the opposition, StandL 238 a/b are sent. If the opponent then agrees to the restriction and withdraws his opposition, StandL 254 a/b are sent. Unless the parties submit an agreement on costs, the Office will take a decision on costs Restrictions and withdrawals of CTM applications after a decision has been rendered Occasionally the applicant withdraws his application after a decision on the opposition has been rendered but without filing an appeal. If the decision rejected the CTMA in full, the applicant must be informed that he cannot withdraw as there is nothing left to withdraw. Article 57 (1) CTMR states that an appeal has suspensive effect. This is interpreted as meaning that the decision is final unless an appeal is filed during the appeal period. If the decision only rejected the CTMA for part of the goods or services, the applicant can withdraw the CTMA for the remainder of these goods and services. If the decision rejected the opposition, the application can at any time be Opposition Guidelines, Part 1 Status: March 2004 Page 78

79 Procedural issues withdrawn or restricted. 2. Withdrawal of oppositions The opponent can withdraw his opposition at any time during the proceedings. If he withdraws his opposition independent of any restriction of the CTM application, three situations can arise depending on the status of the opposition. (When the opponent withdraws his opposition because of a restriction of the CTM application, see above.) 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, StandL 254 a/b are sent. If the opponent withdraws his opposition during the cooling off period without any restriction of the application, the Office neither refunds the opposition fee nor takes a decision on costs 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, StandL 254 a/b are sent. Unless the parties submit an agreement on costs, the Office will take a decision on costs. 2.3 Withdrawal of the opposition after rendering a decision Occasionally the opponent withdraws his opposition after a decision on the opposition has been rendered but without filing an appeal. If the decision rejects the opposition, the opponent must be informed that he cannot withdraw as there is nothing left to withdraw. Article 57 (1) CTMR states that an appeal has suspensive effect. This is to be interpreted as meaning that the decision is final unless an appeal is filed during the appeal period. This interpretation also applies when the opposition has been upheld. 3. Revocation of withdrawal/restriction 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 it received the first submission. Otherwise the previously submitted declaration of withdrawal/restriction becomes effective upon its receipt by the Office provided that this declaration Opposition Guidelines, Part 1 Status: March 2004 Page 79

80 Procedural issues is made without conditions or time limitations. 4. Language A restriction may be submitted either in the first or the second language of the CTMA (Rule 95(a) IR). When the restriction is submitted in the first language of the CTMA, 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 with StandL 222a/b and 238a/b respectively requesting him to inform the Office whether or not he maintains his opposition. If the opponent objects to the language of the restriction and asks for a translation into the language of proceedings, we send the restriction to Luxembourg for translation. Opposition Guidelines, Part 1 Status: March 2004 Page 80

81 Procedural issues VIII. DISCLAIMERS (PROCEDURAL ISSUES) Art. 38 CTMR, R 11(2) IR A disclaimer means that the applicant renounces exclusive rights to a part of the mark. The disclaimed part of the mark may either be a non-distinctive word or a non-distinctive figurative element. Where the trade mark contains an element that is not distinctive, the examiner can request the applicant to disclaim any exclusive right to that element where the inclusion of that element could give rise to real doubts as to the scope of protection of the mark. The applicant himself may also disclaim any exclusive right to the element. It may happen that a disclaimer request from the applicant is received during opposition proceedings. As it is made after the publication, it will be published together with the registration. If a disclaimer is filed during opposition proceedings, the OD is responsible for the key-in. Translations of the disclaimed element are not needed. The OD will forward the disclaimer request to the opponent for information purposes without giving him a deadline. He then has a chance to evaluate whether the disclaimer is essential to him or not. In principle the disclaimer does not affect the opposition proceedings. If an opposition is withdrawn due to a disclaimer before commencement of proceedings, the opposition fee is not refunded. As a disclaimer is something different from a withdrawal or limitation, this is not a case contemplated by Rule 19 IR. Opposition Guidelines, Part 1 Status: March 2004 Page 81

82 Procedural issues IX. FRIENDLY SETTLEMENT Art. 43(4) CTMR The Office may, if it thinks fit, invite the parties to make a friendly settlement. The Office, as well as the parties, may therefore initiate a settlement procedure. 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 take action only if a settlement between the parties appears desirable in the light of the case or if there are good reasons for considering that the proceedings can be ended by a settlement, in particular because one party has made known that it wishes to negotiate. The Office can, moreover, if expressly requested by the parties, 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. 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 without giving specific reasons to rule that the case will not proceed to judgment. It suffices to communicate the written agreement of the parties, which does not have to include a statement of grounds, to the Office for the proceedings to be closed by a decision not to proceed to judgment. The Office then takes the steps needed to close the proceedings on the basis of this agreement (status: agreement after commencement). Parties that reach a friendly settlement before the commencement of the proceedings, if the CTM application is not withdrawn or limited, are not entitled to a fee refund. Even though friendly settlement may be in the interest of all parties, making a proposal is not always evident, as it is difficult to avoid giving an indication of the outcome of the possible decision, which would mean that one of the parties would not be interested in settlement. An example of a proposal made by the Office could be the one made in opposition B In this case the CTM application was KINESYS for Non-medicated toilet preparations; cosmetics; preparations for removing cosmetics; soaps; shampoos; washing preparations; preparations for the care of the skin and for the hair; anti-perspirants; deodorants for personal use; Opposition Guidelines, Part 1 Status: March 2004 Page 82

83 Procedural issues depilatory preparations; preparations for the nails; astringent preparations; sun screening and sun tanning preparations, and preparations for use on the skin after sun tanning; moisturising preparations in class 3, and Pharmaceutical preparations and substances; medicated preparations for topical application; anti-fungal preparations; analgesic preparations; ointments; liniments; disinfectants; anaesthetics; antibiotics; anti-inflammatory preparations in class 5. The CTM application was contested on the basis of the earlier registration KINESIA, registered for Preparations for bleaching and other substances for washing; preparations for cleaning, brightening, degreasing and polishing; soaps; perfumery essential oils, cosmetics, hair lotions; toothpastes in class 3. During the proceedings the applicant submitted samples of all the goods he intended to market. It became clear that his goods were aimed at professional, or at least serious, athletes. The Office then proposed the following to the parties: I. The applicant is to restrict his application to: Sun screening and sun tanning preparations for athletes in class 3, and Pharmaceutical preparations and substances; medicated preparations for topical application; anti-fungal preparations; analgesic preparations; ointments; liniments; disinfectants; anaesthetics; antibiotics; anti-inflammatory preparations; all the aforementioned products for athletes in class 5. II. The opponent then withdraws his opposition. III. Each party bears their own costs. As this proposal apparently suited both parties the proposal was accepted, and the opposition concluded without a decision. Opposition Guidelines, Part 1 Status: March 2004 Page 83

84 Procedural issues X. SUSPENSION 1. Introduction A suspension can be decided by the Office acting ex officio, at the request of both parties or at the request of one of the parties. If the suspension is requested by both parties, even when no reason is given, the Office will suspend the proceedings. In this case the parties have to indicate the period for which the suspension is requested (although a proper reason should be given if the period of the suspension requested is abnormally long, e.g. one year or more). If the parties do not indicate the period, the Office suspends the proceedings for two months. R 21(2) IR, 20(6) IR If the opposition is suspended by the Office acting ex officio or at the request of one of the parties, the decision of suspension must be based on proper reasons. The IR contemplates two specific cases where the proceedings may be suspended: - multiple oppositions; - the opposition is based on an application for registration. Apart from these two specific cases the IR stipulates that opposition proceedings may be suspended where circumstances are such that such suspension is appropriate - Rule 20(6) IR. Here the IR merely gives the OD the discretionary power to suspend the proceedings, leaving it up to the examiner to identify the situations where this power should be exercised. The most common unspecified cases where in principle oppositions may be suspended are the following: - The trade mark registration on which the opposition is based is subject of administrative or judicial proceedings that may affect the registration or the opponent s entitlement to it. - The parties are negotiating the settlement of the opposition. There are some other situations where the suspension may also be advisable or even necessary, such as third party observations, errors in the publication of the contested application which require re-publication, transfer pending on earlier CTMs/CTMAs or contested CTMA, withdrawal of the representative. This chapter does not deal with these cases. Opposition Guidelines, Part 1 Status: March 2004 Page 84

85 Procedural issues It should be noticed that in none of the above-mentioned four cases there is an obligation to suspend the proceedings. The decision is at the discretion of the Office. This means that none of the above situations, per se, confer on any of the parties the right to have the proceedings suspended. On the other hand, when the circumstances of the case call for a halt in the proceedings, the examiner is expected to suspend the proceedings. Moreover, in the case of multiple oppositions and in the case where the opposition is based on an application for registration, the fact that the IR contains specific rules for these particular cases does suggest that the proceedings should be suspended or at least the possibility of suspending the proceedings should be duly considered. The decision of suspending the proceedings or not ultimately depends on the circumstances of the case. In the following sections, the most common circumstances that may lead to declare or exclude the suspension of the proceedings are explained. 2. Multiple oppositions When there is more than one opposition pending against the same CTMA, and if there is a strong case which can lead to the total rejection of the CTMA (or at least of all goods and services contested by the sum of all oppositions), OD will regularly suspend the other proceedings until a final decision is reached Explanation R 21(2), 20(6) IR In principle an opposition can only be considered as a very good case if it is founded on Article 8(1) and based on a registered trade mark. Experience shows that claims based on well known trade marks Article 8(1) - or on the reputation allegedly achieved by registered trade marks Article 8(5) - have more possibilities of being rejected. Thus, suspensions are not very appropriate in these cases - at least at the very beginning of the proceedings. Also, an opposition cannot in principle be considered as strong, for the purpose of suspending all the others, if it is based on an earlier application. The opposition justifying the suspension of all others must not only be strong. It must be lethal, that is, it must be directed against all the goods and services contested by all the oppositions that are to be suspended. This means that only strong oppositions directed against all the goods and services contested by the weaker oppositions may be considered as lethal. Thus, if the CTMA covers all goods in class 9 and the strong opposition (sign identical to the CTM) only covers computers in class 9, whereas a weaker opposition (sign only slightly similar to the CTM) covers all goods in class 9, the strong one is not considered lethal and Rule 21(2) does not apply. Obviously the opposition must be strong in relation to all the contested goods. No matter how strong it is in relation to a particular category of goods or services, one opposition will not lead to the suspension of all the others in cases where it is weak in relation to some goods or services which are contested in other Opposition Guidelines, Part 1 Status: March 2004 Page 85

86 Procedural issues oppositions. Finally, nothing prevents the Office from suspending all oppositions except two or more, which combined are lethal The moment to suspend The suspension should in these cases take place at the earliest possible stage, that is, at the time of notification of the notice of opposition. If for some reason the opposition proceedings which are kept running do not allow us to take a decision on substance, Rules 21 and 20(6) IR give the possibility of subsequently resuming proceedings for the opposition/s that are deemed appropriate. Thus, when multiple oppositions are received, ATMDD will decide on the suspension. If the examiner in charge of the opposition concludes that one of the oppositions is lethal and that all the others are to be suspended, no decision on suspension should be taken until this opposition is ready for notification. As soon as the lethal opposition has been notified, we notify and immediately suspend the remaining oppositions. The Office may also suspend the oppositions at a later stage. This may however raise the question of whether or not the opponent will be entitled to the refund of half of the opposition fee, if his opposition is deemed to be disposed of because of the rejection of the CTMA in other proceedings Monitoring suspended files The suspension of oppositions at such an early stage also involves some risks. The examiner must take care when dealing with withdrawals, substantiation of earlier rights and proof of use in the active proceedings. If the lethal opposition is settled or withdrawn (e.g. during the cooling-off period), the suspension of the remaining proceedings must come to an end. If the lethal opposition is not substantiated properly, the suspension of the remaining proceedings must be reconsidered and possibly come to an end. The same applies when the opponent fails to furnish proof of use or submits evidence that is clearly insufficient to establish genuine use. In any case Euromarc will generate due dates every six months for the suspended files. These should be used to check the active file in order to confirm that the suspension still makes sense. (Note that when an opposition is entered through modification and an accept is done to validate, Euromarc automatically creates a new due date of 6 months) 2.4. After rejection of the CTM application Opposition Guidelines, Part 1 Status: March 2004 Page 86

87 Procedural issues When the CTMA is subsequently rejected because of the lethal opposition, the suspended oppositions will be deemed to have been disposed of after the decision becomes final. Therefore, three months later a check must be made whether any appeal has been entered against the OD decision. If the decision has become final, the parties to the other proceedings must be informed, the suspended oppositions will be closed and 50% of the opposition fee will be refunded to each opponent, Rule 21(4) IR. If an appeal has been filed against the decision the oppositions remain suspended. If the BoA reverses the decision the other proceedings will be resumed immediately, without having to wait for such decision to become final. This is because the opposition in question can no longer be seen as a clear winner. Even if the decision of the BoA is appealed, the fact is that the proceedings to be resumed will probably come to an end before the CFI decides on the appeal, and naturally the latter decision may also be disputed by another appeal before the ECJ Resuming the proceedings If the suspended proceedings are to be resumed, in a case where they have been suspended at the very beginning, all the dates for the cooling-off period and subsequent time limits will have to be set, repeating all the usual information and warnings of StandL 211 and 212. If the suspension took place after the end of the cooling off period, the proceedings will be resumed at the stage in which they were at the time. 3. The opposition is based on an application When the opposition is based on an application, the proceedings are not suspended. A suspension will only be required at the end of the proceedings, if the decision cannot be issued without taking into account this earlier right. In the following exceptional cases OD suspends at the beginning or during the proceedings: 1 Earlier right is a CTMA: check if the application is facing problems. If so, consider the probable outcome of the opposition in order to decide on the suspension. 2 Earlier right is a national application: one of the parties requests the suspension and brings evidence that the application is facing problems. If so, consider the probable outcome of the opposition in order to decide on the suspension Explanation of the basic principle, moment to suspend Opposition Guidelines, Part 1 Status: March 2004 Page 87

88 Procedural issues R 20(6) IR In principle oppositions based on applications are not to be suspended, at least not at the very beginning of the proceedings. The assumption is that in most of the cases the applications mature into registrations, during the proceedings. Assuming that the opponent files sufficient evidence of ownership of a national application, the opposition will proceed until it is ready to be decided (the same will happen with earlier CTMAs which do not require any evidence). Before closing the proceedings Euromarc must be checked (in cases of an earlier CTMA) or, in the other cases, the opponent must be requested to provide information on the status of the application. If at that stage the application is still pending, the possibility of suspending the proceedings must be considered Exceptions to the basic principle Exceptions will only occur when two cumulative conditions are fulfilled: (1) The earlier application is facing problems. When the Office has information that the earlier application is facing problems the general assumption that the application will mature to registration is no longer valid. The earlier application is considered as facing problems when objections are raised by the trade mark office, when oppositions are pending against it or when there is a refusal waiting to become final. (2) The final decision cannot be issued without taking into account the earlier application. This is when the circumstances of the case do not allow us to say that in any case the opposition will be rejected (e.g. because there is no likelihood of confusion) or upheld (because there are other earlier rights that are sufficient to reject the contested CTMA). The second condition deserves a closer look. Does the application in question make a difference to the outcome of the opposition? When the answer is clearly negative, the proceedings should not be suspended. This includes the cases where the opposition will be rejected anyway and the opposite cases where the opposition will be successful anyway (because the opposition is also based on other earlier rights, one or some of which are clear winners ). The BoA held that When an opposition is based on an application for registration, it may be appropriate to suspend the opposition proceedings under Rule 20(6) IR, to await registration of the opponent s earlier mark. Nevertheless, if an opposition is to be rejected, either for formal or for substantive reasons, a suspension would be meaningless and would simply prolong the proceedings unnecessarily (paragraphs 31 and 32). When there are no other earlier rights to take into account (because there are Opposition Guidelines, Part 1 Status: March 2004 Page 88

89 Procedural issues no other earlier rights or they were not substantiated) or when the application 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 CTMA. If this assessment is done at an early stage of the proceedings, one must take into account that a preliminary examination of the case is never as deep and thoughtful as when the decision is being drafted. Therefore a certain degree of precaution must be used here. In borderline cases, when the outcome is not clear, the proceedings should in principle be suspended Earlier CTM applications The possibility of suspending the proceedings should be considered at the beginning of the proceedings, that is, before notification of the notice of opposition. In this case clerical staff should make an ex officio search on the status of the earlier CTMA. If there are problems with it, the opposition will be suspended as long as the second condition mentioned above is fulfilled. In order to conclude that the CTM application is fragile because it is subject to one or more oppositions, it is not necessary to check the viability of those oppositions. It should be kept in mind when dealing with the adversarial part of the proceedings that the issue of the suspension may only arise after the coolingoff has expired. For example, the opposition is based on a confusingly similar CTMA but it is not suspended because there is another earlier right (a registered trade mark) on the basis of which the contested application must be rejected. If the opponent fails to substantiate this earlier right, the earlier application, which before was not relevant to the outcome, becomes crucial for the decision. If according to the records the earlier application is facing problems, the opposition should be suspended Earlier national applications When the opposition is based on a national application the opposition is not suspended at the beginning of the proceedings, as it is not known whether the application has a problem. The issue of the suspension will have to be raised by the parties (normally the applicant). In this case the party has to submit evidence that the earlier application is facing problems. Upon such request the Office will consider whether under the circumstances of the case it is advisable to suspend the proceedings. Opposition Guidelines, Part 1 Status: March 2004 Page 89

90 Procedural issues If no one raises the question the general principle applies, the Office only has to decide on the suspension if the proceedings reach the end and there is no information that the application has matured to registration. In this case the opponent should be required to inform the Office on the status of his earlier application Nuances In any case, the question of whether to suspend the proceedings because of earlier applications may appear in many different shapes and therefore is a matter to be decided on a case by case basis. There are no rigid rules here and good sense is the key. Here are some examples where according to the general practice indicated above the situation apparently does not require a suspension of the proceedings, but the suspension can nevertheless be decided if the examiner finds it appropriate: The opposition is based on a French trade mark registration and on a CTM application, which does not face problems, both covering the same sign and goods, which are confusingly similar to the contested trade mark. Thus, the opposition may be dealt with on the basis of the French trade mark only. However, confusion can be more likely to occur in Member States other than France (because for example the phonetic similarities are stronger in other Member States). In such a case our decision will be more solid if based on the CTM. The earlier application does not make too much difference to the outcome, but the applicant requests a suspension. If the earlier right is a CTMA and we conclude that it is facing problems or, in case of a national application, if the applicant files evidence that the opponent s application is facing problems, the proceedings may be suspended. Since in principle the applicant is the most interested party in getting a fast decision, OD should not insist on the continuation of the proceedings if he prefers to wait Monitoring suspended files In the cases where the proceedings are suspended, Euromarc will create due dates every six months. These dues dates will help us to check the status of the earlier CTMA and check whether the suspension is still necessary. In cases where the earlier right is an application for a national registration the resumption of the proceedings will always depend on the initiative of the parties, who are expected to inform the Office when the application matures to registration or is rejected. In any case as the due dates are created automatically by Euromarc, it must be checked whether there are any Opposition Guidelines, Part 1 Status: March 2004 Page 90

91 Procedural issues forgotten links where the parties furnish information on the matter. The opponent may also be requested to inform the Office Resuming the proceedings When the time comes for resuming the proceedings, because the earlier application has matured to registration or has been rejected, the parties must obviously be informed of the time limits pending upon resumption. In a case where the proceedings have been suspended from the very beginning, we have to set all the dates for the cooling-off period and subsequent time limits. 4. Earlier right at risk When the earlier right is at risk, the opposition is suspended if the earlier right on which the opposition is based is under attack, unless this earlier right is irrelevant for the outcome of the opposition. If the earlier right is a CTM and a cancellation is pending against it we suspend ex officio from the very beginning, that is, at the time of notification of the notice of opposition, unless this earlier right is irrelevant for the outcome of the opposition. R 20(6) IR 4.1. Cases envisaged It should be noted first of all that these situations are similar to the cases where the opposition is based on an application. In both cases there is some uncertainty about the earlier right on which the opposition is based. Nevertheless there are some differences between them which justify a different section. The cases in question here can be divided in two different groups: Case 1 - The opposition is based on a CTM that is subject to cancellation proceedings. The status of the registration in Euromarc (CTM ONLINE does not provide any information on pending cancellation proceedings) will have to be checked. Here the possibility of suspending the proceedings must be considered before the applicant is notified. In any case the applicant should be informed of the existence of such proceedings, since the details of the earlier CTM will be sent to him. Case 2 In the remaining cases the earlier right is subject to national proceedings. Here the suspension is not decided ex officio. The suspension is usually requested by the applicant, who is normally a party to other proceedings where the earlier right or the opponent s entitlement to it is at stake. The outcome of these proceedings must have some impact on the opposition. Opposition Guidelines, Part 1 Status: March 2004 Page 91

92 Procedural issues The following examples come in this category: - 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 his own name. Criminal actions brought against the opponent or actions seeking compensation from the opponent, no matter how related to the earlier trade mark, will not have any impact on the outcome of the opposition proceedings and therefore do not justify suspension Factors to consider If one of the parties requests the suspension or if we know that there are cancellation proceedings against the earlier CTM, consideration must be given whether the earlier right in question makes a difference 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. The OD will not judge on the possible success of the national action. Nevertheless, if the other party argues this point, we should invite the parties to file evidence or observations. If it is concluded that the suspension may take place, the other party may be given the opportunity to comment on the request, in particular if the evidence submitted is not absolutely clear. When the other party is not invited to comment, the examiner may still reverse his finding if the other party reacts to the granting of the suspension Evidence Be it requested by the opponent or by the applicant, the request for suspension must be supported by evidence. This evidence must be official, clearly identify the proceedings leading to the suspension, and 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. The insufficiency of the evidence may be remedied, if the other party is invited Opposition Guidelines, Part 1 Status: March 2004 Page 92

93 Procedural issues to comment and does not respond or does not contest the existence of such proceedings or their influence on the opposition Monitoring suspended files In the cases where the proceedings are suspended, due dates must be created every six or nine months in order to check if the parties have furnished any new information on the state of the proceedings. The examiner may also invite the parties to inform the Office of the state of the proceedings Resuming the proceedings Proceedings must be resumed as soon as national proceedings come to an end. If the decision taken in the national proceedings invalidates, revokes, results in some other way in the extinguishment of the right, or transfers the opponent s earlier right, the opposition will be deemed non-substantiated insofar as it is based on that earlier right. 5. Ongoing negotiations Summary of the OD practice in these cases: If the request is signed by both parties the proceedings are suspended. If the request is signed by one of the parties only, we do not, in principle, grant the suspension. R 20(6) IR Generally, when the parties are negotiating they request that the proceedings be suspended, in order to avoid further costs. However, as mentioned in the introduction of this section, when both parties request the suspension they do not have to give a specific justification. The suspension is always granted. So the question of whether or not ongoing negotiations justify a suspension of the proceedings is only worth considering when one party alone submits the request. Contrary to our practice for extensions of time, in these cases that answer is generally no. Requests for suspension of proceedings submitted by one of the parties based on ongoing negotiations between the parties will in principle be rejected. Negotiations between the parties are a common occurrence during opposition proceedings and it may be the case that the other party may wish to negotiate provided that such negotiations do not cause any delay to the proceedings. Thus, negotiations not give either of the parties the right to ignore a pending time limit, to get an extension of it or to get a suspension of the proceedings. Opposition Guidelines, Part 1 Status: March 2004 Page 93

94 Procedural issues Thus, in these cases the request is rejected but the party in question is informed that the Office will suspend the proceedings if both parties submit the request. 6. Procedural aspects Letters suspending the proceedings should always indicate the date the suspension takes effect, generally the date when a valid request was submitted. If the suspension is decided for a fixed period of time, the letters must also indicate the date when the proceedings are resumed, and what happens after that. The date on which the suspension ends will be deleted from the standard letter. It should be noted that suspension periods are not time limits. There are therefore some differences between them. If on 30/01 a request for a two month suspension signed by both parties and submitted on 15/01 (five days before the expiry of the time limit of the opponent for completing the opposition - 20/01) is dealt with, the result will be: The Office has suspended the opposition proceedings at the request of both parties. This suspension takes effect as from 15/01. The proceedings will be resumed on 15/03, with no further notification from the Office. The time limit for the opponent is now 20/03. The time limit for the applicant is now 20/05. In principle therefore, the pending time limit will continue after resumption of the proceedings and the days that are left until expiry are the same as those that were left at the date of filling of the suspension request. However, the situation is not so clear in cases where the proceedings are suspended indefinitely. If in the example referred to above the suspension is granted because the opposition is based on a CTM application, the period of suspension will be undetermined. Proceedings will be resumed when the Office says so. In this case, when a year later, after having confirmed that the CTMA will mature into registration, we resume the proceedings, we cannot grant the opponent only five days to complete the opposition file. This is because the proceedings would have been stopped for a year and the resumption would come too suddenly. Under these circumstances five days are not enough to allow the opponent s representative to get hold of the case again. Thus, in situations like this it is advisable, because it is more equitable, to give the opponent a full two-month period once again. Opposition Guidelines, Part 1 Status: March 2004 Page 94

95 Procedural issues XI. MULTIPLE OPPOSITIONS R 21 IR Multiple oppositions are involved when different oppositions are filed against the same CTM application. Around 20% of all contested applications are opposed by more than one opposition. When CTM applications are opposed by more than one opposition there are some extra factors to take into account. First of all, unless there is a major delay during the admissibility stage concerning one of the oppositions, in case of multiple oppositions it is practice to notify the applicant 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 limitation 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 and, consequently, the question if after every decision rejecting the CTM application in part a separate letter for conversion should be sent to the applicant should be answered. Finally, under certain circumstances multiple opposition may be joined and dealt with in one set of proceedings. 1. Multiple oppositions and limitations When there are multiple oppositions and the applicant restricts the goods & services in one of the opposition proceedings, all the other opponents will have to be informed by sending the appropriate letter (218 a/b, 222 a/b, 250a/b or 238a/b), insofar as the limitation concerns contested goods or services of the other oppositions. However, if there is no relation between the goods or services in the limitation and the contested goods and services, the opponent should not be informed, not even by sending StandL 213. For example, there are four oppositions against the same CTM application, applied for goods in classes 3, 14, 18 and 25. Opposition 1 is directed against class 3, opposition 2 against class 25 (clothing, footwear, headgear), opposition 3 against classes 18 and 25, and opposition 4 against classes 14 and 25. The applicant sends a limitation in opposition 2, deleting clothing and headgear. Apart from the appropriate letters in opposition 2, the appropriate letters should also be sent in oppositions 3 and 4. As the limitation does not affect the contested goods of opposition 1, no action is necessary in this opposition. Opposition Guidelines, Part 1 Status: March 2004 Page 95

96 Procedural issues 2. Multiple oppositions and decisions When none of the oppositions were suspended at a preliminary stage in accordance with Rule 21(2) IR (the case of the lethal opposition, see chapter X), the order in which to take the decisions in the multiple oppositions is to be determined. Although the order is at the discretion of the examiner, 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 BoA can take some time. If all the oppositions (which are ready for decision at about the same time) will be successful, first the opposition eliminating most goods and services of the CTM application (the widest extent of the opposition) should be taken, followed by decisions on the opposition contesting goods or services different from the goods and services contested by the first. In the example mentioned above, the first decision should either be taken in opposition 3 or in opposition 4 and afterwards opposition 1. Suppose the first decision is taken in opposition 4, and the CTM application is rejected for classes 14 and 25. If it is waited until the appeal period has expired and no appeal is filed, opposition 2 is disposed of, as it has become without object. The opponent should be informed and the opposition must be closed by sending an adapted StandL 251. As the opposition was not suspended before commencement of the adversarial part of the proceedings there will be no refund of the 50% of the opposition fee. The case is considered to be a case that has not proceeded to judgement within the meaning of Article 81(4) CTMR. Consequently, the costs are at the discretion of the OD. 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 their own costs. If it is not waited until the appeal period has expired and the decisions are taken more or less at the same time, each and every one of the four decisions should deal with all the contested goods and services of the CTM application. In the previous example, if opposition 4 is the first that is decided, even though the CTM application has already been rejected for the goods in class 25, the decision in opposition 3 should not only deal with class 18 but also with class Opposition Guidelines, Part 1 Status: March 2004 Page 96

97 Procedural issues Multiple oppositions and conversion Art. 108(4) CTMR According to Article 108(4) CTMR, when a CTM application is refused by a decision of the Office which has become final, the Office shall give the applicant a period of three months in which a request for conversion may be filed. If there are multiple oppositions and the OD decisions have not been taken (or have not become final) at the same time, the question arises whether for each final decision a separate letter (StandL 256) should be sent to the applicant or whether it suffices to send one letter after all the decisions have become final. This question is best illustrated with an example. Imagine a CTM application in classes 24, 25 and 26 against which 3 oppositions were filed. The first opposition is against the class 24 goods. After a short proceedings it is decided to reject the CTMA for the goods in class 24. The second opposition is against the goods in class 25. The CTMA is partly refused, namely for footwear. A decision is rendered two years after the opposition was filed. The third opposition is against class 26. After three years several extensions of the cooling off period the OD decides to reject the CTMA for all goods in class 26 as well. The applicant appeals and, after 1 year, the BoA confirms the decision of the OD. In favour of dealing with every final decision with a separate letter is the argument that the risk of error on the part of the OD is smaller. This would also give more security on a national level as, if the Office would wait until the last decision has become final, many years may have passed and third parties may be in for a nasty surprise. The situation could arise where a third party applies for a national mark and gets it registered only to find out at a later date that the CTM applicant requested conversion of a similar mark for similar goods with an earlier filing date. The argument against three separate letters is the costs for the CTM applicant when he has to request conversion three times. (If he does not request conversion within 3 months of receipt of our letters the request will be rejected) Consequently he will have to pay the conversion fee at OHIM three times as well as three national application and registration fees. On balance, it is decided that the interests of the CTM applicant outweigh the interests of a possible third party that may have applied for a similar mark within the period the potential application existed. For this reason it is OD practice to send the 256 conversion letter only once, namely after the last opposition decision has become final. Opposition Guidelines, Part 1 Status: March 2004 Page 97

98 Procedural issues 4. Joinder of proceedings R 21(1) IR Rule 21 (1) IR allows the Office to deal with multiple oppositions in one set of proceedings. If it is decided to join the oppositions StandL 230a/b must be sent. Under certain circumstances the oppositions may be joined. In order to join oppositions, they must have the same opponent or there must be an economic link between the opponents, for example a parent and subsidiary company. When it is decided to join the oppositions it should be verified whether the opponents have the same representative. If not, they must be asked to appoint one single representative. Also, 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 oppositions must be disjoined and dealt with separately. If at any stage these conditions are no longer fulfilled, for example the one and only earlier right of one of the joined oppositions is transferred to a third party, the joinder may be undone. To this end StandL. 231a/b should be sent. Unless the joinder is dissolved before the decision is taken, only one decision is taken. Opposition Guidelines, Part 1 Status: March 2004 Page 98

99 Procedural issues XII. SUBSTANTIATION OF EARLIER RIGHTS R 16, 17(2), 20(2) IR After the applicant has been notified of the opposition, the opponent has four months in which he may complete his file, that is, present all the evidence he deems necessary to win his opposition. At the end of this period the opponent must have filed evidence of the existence and validity of his earlier trade mark registrations, evidence of reputation, evidence of the existence and the scope of protection of his earlier sign and that it has been used etc. If he wishes to do so he must also file evidence that supports his arguments in this period. The evidence must be in the language of the proceedings. 1. Trade mark registrations or applications To prove the validity of an earlier trade mark registration or application the opponent must provide the Office with evidence. The OD accepts the following documents Certificates issued by the appropriate official body Any certificate of registration, issued by a national office or by WIPO if it concerns an international registration are valid evidence. If the opposition is based on an application, the opponent must file evidence that the application was filed at the national office or that an international application was filed with WIPO. 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, for example the Spanish certificates, have to be checked carefully as the only differences between an application and registration certificate is the registration date and official seal of the office 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. Extracts from commercial database are not accepted, not even if they reproduce exactly the same information as the official extracts. An extract of an application is not sufficient to prove that the trade mark has Opposition Guidelines, Part 1 Status: March 2004 Page 99

100 Procedural issues been registered. In other words, it cannot serve to prove the existence of a trade mark registration. Officially accepted databases are: - BENELUX-MERKEN (for Benelux trade marks), - DPINFO (for German trade marks), - SITADEX (for Spanish trade marks), - OPTICS and extracts from UKPO web site (for UK trade marks), - ROMARIN and MADRID EXPRESS DATABASE (for international registrations). Extracts from other national offices are also accepted as long as they come from an official database. A document is being prepared that identifies acceptable and unacceptable evidence. Although DEMAS is not an official database, several BoA decisions have obliged the Office to accept it. Extracts from commercial databases are not acceptable. Examples of extracts that are not accepted are MARQUESA, COMPUSERVE, THOMSON, ICIMARQUES, PATLINK or COMPUMARK 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 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 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. Although international registrations are published as registrations, they can still be refused by national offices of the designated countries The Office accepts the WIPO publication as sufficient evidence of registration. Only if the applicant contests registration of the mark in question in a territory will the opponent Opposition Guidelines, Part 1 Status: March 2004 Page 100

101 Procedural issues have to provide evidence that the mark was not refused. WIPO publications and WIPO s ROMARIN extracts sometimes provide information on provisional or definite refusals of the registration for certain countries. The evidence for international registrations thus also needs to be checked to see what countries the international registration covers and what goods and services are specified; it is possible for each listed country to have a different specification of goods and services Duration of a trade mark registration The basic rule is that the registration of a mark lasts 10 years from the date of filing. After this period has elapsed the registration of the mark has to be renewed. The exceptions to this rule are as follows: International marks may be valid for either 10 or 20 years. The extract from the bulletin will say which is the case. In Austria, Denmark, Finland and Sweden, trade marks are valid for 10 years counting from the date of registration. UK trade marks which were registered (in the sense that all the formalities for registration were completed) prior to 31/10/1994 are in force for 7 years. Marks for which the registration procedure was completed after this date are in force for 10 years. Spanish trade marks applied for before 12/05/1989 lasted for 20 years. This 20-year period ran from the date of registration, not from the date of filing. These provisions apply regardless whether the registration formalities were completed before or after 12/05/1989. Irish trade marks which were registered before 01/07/1996 lasted for 7 years with a 14 year renewal period. Irish marks registered since 01/07/1996 last for 10 years with 10-year renewal periods Verification of the evidence The number in square brackets is the international code number used to identify the information on many, but not all, registration certificates. The opponent is not obliged to submit an explanation of the codes, either for the INID or for the national codes. The following things should be checked: Opposition Guidelines, Part 1 Status: March 2004 Page 101

102 Procedural issues - 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 ( that is, in which countries the mark is protected and for what goods and services); - The filing [220], priority [300] and registration dates [115] (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, 541, 546, 554, 556, 557, 571, 591]; These indications can indicate colours or that the mark is three dimensional. - The goods and services covered [511]; - The expiry date of the registration; - The owner [731, 732]; - Other inscriptions affecting the legal status or the scope of protection of the mark (e.g. disclaimers [526], limitations, renewals, transfers, pending actions etc) Renewal certificates If the opponent has submitted a certificate of registration but one of the above periods has expired for the mark concerned, he must file a renewal certificate in order to prove that his registration is still in force. 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. It is the actual status of the mark that counts, so it is of little importance to also have a copy of the certificate of registration. Nevertheless, in these cases it has to be carefully verified if the renewal certification contains all the necessary information. Some renewal certificates are merely confirmations that the registration was renewed without any other data than the registration number and some dates. In these cases, for example with Spanish and German renewals, the renewal certificate alone is insufficient Opposition Guidelines, Part 1 Status: March 2004 Page 102

103 Procedural issues to determine the scope of the protection of the earlier mark. However, if the opponent provides a printout from one of the above cited official databases showing that the trade mark is in force he does not also need to provide a renewal certificate, even if the mark was registered, for example, fifty years ago, as long as the extract contains all the necessary data that determines the scope of the protection of the earlier mark. Within the period of four months to complete the file, the opponent should file evidence that the mark(s) on which he relies is still in force. If there is no evidence of renewal, the earlier registration will not be taken into account (when there are other earlier rights that have been substantiated) or the opposition will be rejected as not substantiated. However, in order to avoid the OD taking a decision in an opposition that is based on an earlier registration that has not been renewed, if a registration that was validly proved expires between the end of the four month period and the moment the decision is taken, the examiner must ask the opponent to provide evidence that the registration has been renewed, regardless of whether or not the applicant raises an objection. The applicant is not given a period of time to comment The proprietor of the earlier registered trade marks must be the same person as the opponent. If the opponent is a corporation, the name of the corporation must be carefully compared with the name of the corporation that is the trade mark owner. For instance with British companies, John Smith Ltd, John Smith PLC and John Smith (UK) Ltd are not necessarily the same legal entity. 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 already available, the registration of the transfer in the relevant register. Art. 42(2) CTMR, R 15(c) IR An exception to the above is that a licensee of the trade mark proprietor may be an opponent. In this case there is a discrepancy between the owner of the earlier registration and the opponent. The extract of the registration will normally reflect when a license has been registered. However, in some Member States such recordals of licenses are not made. In all cases, it is up to the licensee to demonstrate that he is authorised by the trade mark owner to bring an opposition. As the number of oppositions filed by licensees is extremely low, there is no practice on what evidence needs to be filed to support such an authorisation. However, an express authorisation or a license contract that authorises the licensee to act in defence of the mark are deemed sufficient. Opposition Guidelines, Part 1 Status: March 2004 Page 103

104 Procedural issues 2. Translations of evidence of trade mark registrations R 16, 17(2), 20(2) IR The Office can only consider evidence that is submitted in the language of the opposition proceedings. This follows from Rule 17(2) IR, which places a clear obligation on opponents to translate any supporting documents that are not filed in the language of the proceedings. If the evidence is not in the language of the proceedings, the opponent is required to file a translation into that language, within the term fixed by the Office for the submission of further evidence mentioned above. Thus, both the evidence submitted by the opponent for the first time at the end of the four-month period, 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. Rule 96 IR is not applicable to such cases because Rule 17(2) IR is a lex specialis to Rule 96. In principle, the Office requires a translation of all the essential particulars of the registration document, including the standard wording of certificates showing which entry corresponds to what information. This means that in order to enable the Office and the applicant to evaluate whether the allegations contained in the notice of opposition are in fact well-founded, the opponent must translate at least the information relating to (a) the issuing authority, (b) the owner (c) the filing and registration numbers (d) the territorial extent (e) the filing, priority & registration dates (f) the goods and services covered, as well as (g) any other inscription affecting the scope of protection of the earlier mark (disclaimers, limitations, renewals etc. However, the Office accepts that no translation of the information headers in the certificates (such as, filing date colour claim, etc) is needed, provided that they are also identified using standard INID codes or national codes. Irrelevant administrative indications, or parts with no bearing on the case, may be omitted from the translation. The OD does not take a formalistic approach as to what may constitute an acceptable translation. As regards the authentication of translations, it accepts uncertified documents, but it recommends that the opponent s representative should add a written, dated and signed declaration stating that the submitted translations are true to the originals. In practice, the OD even accepts handwritten inscriptions 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 cover all the essential particulars of the opponent s case. 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 Opposition Guidelines, Part 1 Status: March 2004 Page 104

105 Procedural issues certificate, even where such indications have been accepted for admissibility purposes. This is because, at admissibility stage, the opponent only has to indicate the particulars provided for in Rule 15 IR in the language of the proceedings, and not to translate any supporting documents with a view to proving that these indications are true. The Office does not make the obligation of the opponent to provide translations of the evidence dependant on the reaction of the applicant because Rule 17 IR does not provide for any exception to the principle that the evidence needs to be translated. If the parties do not avail themselves of the possibility of agreeing upon a different language of proceedings, afforded to them by Rule 17(3) IR, they will have to stick to the procedural language, and the opponent will have to comply with the requirements of Rule 17(2) IR. The opponent is not obliged to submit a translation of the explanation of the INID or of the national codes in the language of proceedings Boards of Appeal The 2 nd and the 3 rd Boards take the view that it is not compulsory for the opponent to translate all the information contained in a certificate and that parts which have not been properly translated in a separate document may be taken to have been translated nevertheless by reference to the information given in the notice of opposition, statements appended thereto or submitted later. BoA R 296/ SPORTS EXPERTS / SPORTS EXPERTS, BoA R 0532/ DENNIS & GNASHER / DENNIS; BoA R 47/ KRIS / CHRIS & CHRIS On the other hand, the 1 st and the 4 th Boards take the opposite view. The 1 st Board stated that: The translation required should reproduce the structure and the contents of the original the evidence required serves not just to provide the applicant and the Office with the basic information concerning the scope of the opponent s claim, but also to allow them to verify whether the basic elements of that, as indicated in the notice of opposition, correspond to the state of the register the opponent s argument that the relevant elements of the registration of its mark can be found, in the language of the proceedings, either in the items of the opposition form, or in the attachments to that form, disregards the very nature of the evidence to be filed, namely that it should be a reflection of the contents of the right as registered The OD concurs with the view taken by the 1 st and 4 th Boards in their decisions, which may be summarised as follows: A translation of the document submitted to prove the existence of an earlier right submitted in a language other than the language of the proceedings must consist of a document which reasonably reproduces the structure and the Opposition Guidelines, Part 1 Status: March 2004 Page 105

106 Procedural issues contents of the original document, so as to allow the Office and the applicant to verify whether the information indicated in the notice of opposition or subsequent thereto corresponds to the documentary proof. Finally, as the OD is of the opinion that Rule 17(2) IR must be applied in a uniform way, the possibility that the applicant will understand a certificate without translation does not excuse the opponent from filing a translation. For example, if the opposition is based on an earlier German registration and both parties and their representatives are German, but the language of the proceedings is English, the opponent still has to file a translation of the registration certificate References to OD Decisions on issues of substantiation and translation Translation Decision No 2165/2001 in B see para. 2, page 4, the opponent filed a copy of the registration certificate but no translation. Paras. 3 and 4 explain what needs to be translated and why. Decision No 2315/2001 in B see paras. 8-10, page 4 and paras. 1-5, page 5. A translation was filed, but no original. Decision No 1713/2001 in B see paras. 5-8, page 4; paras. 1-3, page 5. Incomplete translation of official documents concerning change of opponent s name. Decision No 1280/2001 in B see paras. 1-5, and 8, page 5. The opponent only translated the goods and services and not the rest of the information on the certificate. Decision No 934/2001 in B see para. 4, page 4; and paras 3-4, page 5. No translations of renewal certificates Decision on private records and substantiation Decision No 1570/2001 in B see paras 4, 5, page 4. We do not accept extracts from private databases. Different on DEMAS the BoA: R 520/ VISION / EYE D VISION; R 750/ KINEPOLIS / KINOPOLIS; R 762/ PIKANTERIA Decision on different owner and opponent and substantiation Opposition Guidelines, Part 1 Status: March 2004 Page 106

107 Procedural issues Decision No 1250/2001 in B see paras. 2-5, page 4. The owner who appeared on the registration certificate was not the opponent and opponent did not explain this. 3. Substantiation of well-known marks, trade marks filed by an agent, claims of reputation, earlier signs used in the course of trade 3.1. Application by agent or representative of the real owner of the mark that is the subject of the CTM application Art. 8(3) CTMR This concerns the case where someone (an agent or representative) other than the real proprietor of a mark applies for its registration at the Office. The real proprietor can oppose the registration. The opponent has to prove his 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 somewhere in the world or evidence of acquisition of rights through use. The opponent also has to submit evidence of an agentrepresentative relationship Well-known marks According to the CTMR, an earlier well known mark is a trade mark that is well known in a Member State, in the sense in which the words well-known are used in Article 6 bis of the Paris Convention. Such a mark may be unregistered, but it may also be registered. If the opponent invokes a registered trade mark and claims the same mark in the same country as a well-known mark, this will in general be taken as a claim that his 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(1) and/or Article 8(5) CTMR. The opponent needs to show that he 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. He will have to submit evidence of use and of the mark being well-known. Opposition Guidelines, Part 1 Status: March 2004 Page 107

108 Procedural issues 3.3. Marks with a reputation Art. 8(5) CTMR An opposition under Article 8(5) CTMR is based on an earlier trade mark that has a reputation. 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 his case under Article 8(5) CTMR, the opponent has to at least substantiate his earlier right and submit evidence of reputation. In addition the opponent has to allege and prove the potential detriment it will suffer, or the unfair advantage that will be taken by the applicant, if the mark is registered, or to indicate that this is probable in the ordinary course of events Non-registered trade mark or another sign used in the course of trade Art. 8(4) CTMR For these rights the Office applies the protection provided by the relevant national law. Not all Article 8(4) CTMR rights are unregistered, e.g. in some countries company and commercial names are registered. If it is a matter of a registered right then a copy of the registration and renewal certificates, etc, is required as set out above for trade mark registrations. In the case of unregistered marks or signs the opponent must provide evidence of the acquisition of the earlier right and evidence that it is of more than local significance. The opponent must file evidence that he has used his sign (earlier right, either registered or not). Furthermore, he also needs to state on which national law he bases his case and to make out his case under this law. 4. Authentication of evidence and translations The Office does not require signed declarations that the documents submitted are true copies of the originals. However, as underlined in the information that is sent to the opponents when the opposition is notified, these declarations are highly recommended. 5. When the opposition is not substantiated 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 he owns a valid earlier right, the opposition must be rejected. Opposition Guidelines, Part 1 Status: March 2004 Page 108

109 Procedural issues The practice of the Office is to inform both parties that in the absence of sufficient evidence to prove the existence and validity of the earlier rights, the Office will proceed with a decision on the opposition. A period of at least two weeks after this notification must expire before taking the decision. Opposition Guidelines, Part 1 Status: March 2004 Page 109

110 Procedural issues XIII. ORAL PROCEEDINGS BEFORE THE OPPOSITION DIVISION Art. 75 CTMR During the opposition proceedings, the parties may at any time ask for oral proceedings. The Office may also summon the parties to an oral hearing on its own initiative. Art. 75(1) CTMR The granting of an oral hearing is discretionary; the Office does not have to follow such a request if it thinks that it is not expedient to do so. The practice of OD is that written proceedings are sufficient and that having oral proceedings is not necessary. Opposition Guidelines, Part 1 Status: March 2004 Page 110

111 Procedural issues XIV. DOCUMENTS NOT READABLE/ CANNOT BE HANDLED / REFERENCE TO OTHER FILES 1. Documents not readable R 80(2) IR Where a communication received by telecopier is incomplete or illegible, or where the Office has reasonable doubts as to the accuracy of the transmission, the Office informs the sender accordingly and invites him, within a period to be specified by the Office, to retransmit the original by telecopy or to submit the original in accordance with Rule 79(a). Mailroom will deal with these re-fax requests. When this request is complied with within the period specified, the date of the receipt of the retransmission shall be deemed to be the date of the receipt of the original communication. 2. Documents submitted in media which cannot be handled by the Office On some occasions a party submits documents or means of evidence in media which cannot be analysed or handled by the Office itself, for instance, CD ROMs or diskettes which cannot be opened or read without the assistance of an expert. In these cases, the Office will inform the party that the evidence will not be taken into account due to technical reasons, and it will invite him to submit within a fixed time limit, the evidence again in any of the standard formats accepted by the Office. If he does, the Office accepts the evidence as received within the period of time. 3. 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 EUR 30 (EUR 10 when uncertified) plus EUR 1 for each page exceeding Confidential information In some cases one of the parties requests the Office to keep certain Opposition Guidelines, Part 1 Status: March 2004 Page 111

112 Procedural issues documents confidential even from the other party in the proceedings. Although the Office can keep documents confidential vis-à-vis third parties (inspection of files), it can under no circumstances keep documents confidential with regard to the other party in inter partes proceedings. Each party to the proceedings must always have a right to defend itself. That means that he should have full access to all material filed by the other party. From this it follows that all material filed by a party should be disclosed to the other party of the proceedings. The Office has an obligation to communicate all material received to the other party. If in the course of opposition proceedings the OD 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 he 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 his case. If he confirms the confidentiality, the documents will not be sent to the other party and will not be taken into account. They will have to be marked as confidential in Filenet. If he 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 Filenet. If he does not reply, the documents will not be sent to the other party and will not be taken into account. They will have to be marked as confidential in Filenet. 5. References made to documents in other proceedings, including before the BoA From time to time the Office receives observations from the opponent or applicant in which he refers to documents filed in other opposition proceedings, for instance to proof of use that has already been filed in a different opposition. Such requests are accepted when the opponent/applicant clearly identifies the documents that he refers to. Clear identification means precise indication. The party must indicate the following: the number of the opposition he refers to, the title of the document he refers to, the amount of pages of this document and the date this document was sent to the Office, for instance the statutory Opposition Guidelines, Part 1 Status: March 2004 Page 112

113 Procedural issues 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. This also includes documents submitted before the BoA, provided that such references clearly identify the documents referred to. However, a general reference to observations or documents submitted in other opposition/appeal proceedings will not be accepted. In such a situation the party referring generally to such other documents should be invited to be sufficiently specific. The party should also be informed that unless such specification is received within the time limit set, such other documents will not be considered. Opposition Guidelines, Part 1 Status: March 2004 Page 113

114 Procedural issues XV. NOTIFICATION BY POST; PUBLIC NOTIFICATION R 61(2)(a),(d) (e) The Office normally communicates with the parties by fax. However, when the party in question does not have a fax machine or when the volume of the documents that is to be sent surpasses 40 pages, notification is done by post. This is also the case where the colour of the marks is decisive for the outcome of the decision. If these two ways of communicating (fax and post) fail, public notification is the last resort. 1. Notification by post R 62(1) IR When a notification is done by post, it is sent by registered mail. Only when the notification contains elements in colour or there is no fax to send it to, will it be notified by registered mail. R 62(4) IR Notification by registered letter, with or without advice of delivery, shall be deemed to have been effected even if the addressee refuses to accept the letter. R 66 IR A distinction is to be made when a notification is sent to a representative or party within the European Union or outside it. If the notification is sent to an address within the EU and it is returned after the first attempt, a second attempt is made. R 62(2) IR If the notification is sent to an address outside the EU, it is of no importance if it is returned. No second attempt is made, as the notification is deemed to have been effected when the posting has taken place. This legal fiction makes further notification or public notification unnecessary. There are only two exceptions to this rule, namely when the Office never had any address of the applicant or opponent at all, or when the letter is returned because of bankruptcy. 2. Public notification Public notification, provided in Rule 66 IR, is only made when the address of the addressee (applicant or opponent within the EU) cannot be established and/or if notification pursuant to Rule 62 IR (i.e. by registered mail) has failed after a second attempt. According to Article 2 of Decision No EX-96-5 of the President of 30 /07/1996, the text of these notifications consists of: Opposition Guidelines, Part 1 Status: March 2004 Page 114

115 Procedural issues a) an indication of the proceedings to which the publication relates; b) the file number of the Community trade mark application; c) the file number of the proceedings; d) the name of the addressee e) the address of the addressee known to the Office; f) the type of document to be notified; g) the date of the document; and, h) the place where the document can be inspected. Art. 116(1) CTMR Article 116(1) CTMR provides that the text of the publication must be published in all official languages of the European Community. Most OD notifications have been translated in all official languages of the EC. These translations are currently being collected and prepared to be put in a database so that they can be used without having to translate. 3. Procedure for public notification The objective of public notification is that the party addressed understands that the Office tried, without success, to contact him, what kind of notification is concerned and where he can find it. To send a public notification, first a request to the publication service must be filled in. The request includes a cover page asking the publication service to proceed with the public notification, followed by 20 tables (one for each language of the EC), containing items a) to h). An example of both the request and a table follows at the end of this chapter. The tables give key information about the letter that was unsuccessfully sent. Each table must be completed in its corresponding language. First it must be checked if the data on the first page are correct: lawyer s name, unit s number, opposition number, etc. There are three kinds of information to fill in: 1. Information that applies to all the cases: a) and h). This is information about the division and the unit; 2. Information that has to be adapted depending on which letter had been sent unsuccessfully: f). Here the title of the letter that was sent has to be introduced, translating it in each table to the corresponding language; 3. Information that has to be adapted to the specific letter that was sent: b), c), d), e) and g). This concerns the CTMA and opposition numbers, the name of the person that the OD tried to reach and the address, and the date of the letter (if the letter has been sent twice, the date of the second letter). All this information is to be taken from the letter that was sent in vain. Opposition Guidelines, Part 1 Status: March 2004 Page 115

116 Procedural issues Until the database (see before) is up and running, it is useful to verify if the letter that is to be notified publicly has been done before for previous public notifications by one of your colleagues, so that double work is avoided. Attention should be paid to the following indications sent to us by publication service: The Greek should be keyed in with font Times New Roman and not be changed manually. People who do not have a PC configured for Greek will not be able to read it. The following format should be used for the date: dd-mm-yyyy. Each language should be on a separate page by inserting a page break. The official order of the languages is: ES-DA-DE-EL-EN-FR-IT-NL-PT-FI-SV Bold fonts should not be used. Particular attention should be paid to the Greek version. For advice, please check with a Greek colleague for addresses in Greek etc. If there is any problem with the Greek font, Publication will send it back and give indications concerning this or other problems. Once all the tables have been completed, the document must be saved (preferably in the personal folder so that it can be found easily for future public notifications, at least until the database comes into existence). R 66(2) IR When all the data are correct, an with the document attached must be sent to *Publication. Some days afterwards, *Publication replies, informing when and in which Bulletin the public notification will be published. The date given is important, as it is the basis for establishing the following time limits. According to decision No EX-96-5 of the President, the letter is deemed to be received 1 month plus 10 days after the date of publication. This latter date plus 2 months equals the time limit to be given. For example, if the letter is published in the Community Trade Marks Bulletin dated 10/05/2002, it is deemed to have been received by 20/06/2002 and the deadline to be complied with is 20/08/2002. As it can concern his own deadlines, for example in the case of public notification of the notification of the opposition, the other party must be informed about these deadlines. Opposition Guidelines, Part 1 Status: March 2004 Page 116

117 Procedural issues EXAMPLE OF REQUEST AND TABLE PUBLIC NOTIFICATION Note for the attention of O/Ref : B xxxxxx Subject : Request for public notification in the Community Trade Marks Bulletin under Rules 61(2)(e) & 66 of the Implementing Regulation Please proceed with the public notification of the following particulars in respect of the above mentioned opposition proceedings, in accordance with Decision No EX-96-5/ of the President of the Office. The relevant information has been translated into all the eleven official languages in the attached tables. Thank you in advance for your co-operation, Examiner s name Enc: 11 tables. Copy: File - ES - NOTIFICACIÓN POR ANUNCIO PÚBLICO Según lo previsto en la Regla 61(2) y 66 del Reglamento de Ejecución y en la Decisión No. EX-965/ del Presidente de la Oficina Procedimiento para el que se efectúa la publicación: Oposición contra la solicitud de registro de marca comunitaria Solicitud nº: 0000 Oposición nº: B 0000 Nombre del destinatario: xxxx Limited Dirección conocida por la Oficina: 77 xxx Avenue xxxx REINO UNIDO Tipo de documento que se notifica: Notificación de una resolución al solicitante Fecha del Documento: dd/mm/yyyy Lugar en que puede consultarse el OAMI, Division de Oposición, Unidad 6 documento: Opposition Guidelines, Part 1 Status: March 2004 Page 117

118 Procedural issues XVI. CONVERSION There is a chapter on conversion in the Office s guidelines and there is also a Guide to Conversion Procedure, both available in OAMI ONLINE. For information on conversion in general reference is made to these guidelines. During opposition proceedings, the applicant may file a request for conversion where the contested CTMA is refused totally or partially Article 108(1) CTMR, and when he withdraws the contested CTMA - Article 108(1) CTMR. 1. Informing the applicant Since March 2004, it is no longer required to inform the parties about the possibility of conversion when an OD decision has been taken. StandL 256 has become obsolete. 2. Requests made in observations Even though it is the Recordal Section of the Administration of Trade Marks and Designs Department (ATMDD) that deals with conversion requests, OD may sometimes receive requests for conversion. For example, an applicant may in the same observations reply to the notice of opposition, restrict his CTM application and request a partial conversion. In these cases, RS might not have a copy of the request. Thus, we should enquire whether a copy was dispatched to RS, by selecting the document in QFMan, clicking View in toolbar and choosing Search copies. The list of addressees is supposed to appear. The Registry is signalled either as RS or IN (inscription). If RS has not received the request we must inform them by copying the request and sending it to them. 3. Opposition based on (to be) converted CTM(A) National applications deriving from the conversion of an earlier CTM(A) are considered to come into existence as soon as a valid conversion request is filed. Such rights will be properly identified for admissibility purposes under Rule 18(1) IR if the opponent indicates the number of the CTM(A) under conversion and the countries for which he has requested the conversion. When during opposition proceedings the CTM(A) on which the opposition is based ceases to exist but at the same time a request for conversion is filed the proceedings must be closed. This is because the earlier right on which the Opposition Guidelines, Part 1 Status: March 2004 Page 118

119 Procedural issues opposition was based has ceased to exist and the subsequent national applications, autonomous and independent, were never the basis of the opposition. Opposition Guidelines, Part 1 Status: March 2004 Page 119

120 Procedural issues XVII. DECISION ON THE APPORTIONMENT OF COSTS/ AGREEMENT ON COSTS 1. In which cases must a decision on costs be taken? Art. 81 CTMR, R 94 IR, BoA R 677/99-2, RISO A decision on costs has to be taken in all opposition proceedings that have passed the cooling off stage, i.e. where the adversarial part of the proceedings has started, and that have come to an end. No decision on costs is taken for oppositions that are closed before or during the cooling off period. (BoA R 862/2000-3, Golden Lites shall not be followed, which argues that the OD has to take a decision where the proceedings are terminated by withdrawing the CTM application or opposition, when the opposition is admissible and when requested by the interested party.) 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 registries of the Opposition Division close the case, a separate decision on costs is issued. 2. In which cases a decision on costs must not be taken? 2.1. Agreement on costs 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. If the parties sign a general agreement that does not include the cost issue and ask the Office to decide on costs the Office will accept this request Information from potential winning party. When the party that will potentially win the proceedings informs the Office that he accepts each party bearing their own costs, no cost decision is necessary. The Office will refrain from taking a decision on costs whenever the potential winning party informs the Office that he agrees to share the costs even if the losing party does not confirm his agreement. The latest letters from both parties have therefore to be checked carefully before issuing a decision. If however the potential losing party sends such a request to the Office, it will be forwarded to the other party. Depending on the answer of the other party, a Opposition Guidelines, Part 1 Status: March 2004 Page 120

121 Procedural issues decision will be issued. If the parties provide the Office with an agreement on costs, StandL 257a/b are sent. 3. Standard cases of decisions on costs Art. 81 CTMR, R 94 IR The general rule is that the losing party, or the party who terminates the proceedings by withdrawing the CTM application or opposition, pays. Article 81(3) CTMR makes a distinction between fees and costs. If the opponent wins, the applicant has to pay the fees and the costs of the opponent, if the applicant wins the opponent only pays the costs. In standard cases the result is the following. - The applicant withdraws or restricts his 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 his opposition without any restriction of the CTM application as regards the contested goods & services. The opponent has to pay the costs. It has to be checked if the withdrawal was linked to a restriction of the CTM application as in this case, it may be the applicant who pays, or a different apportionment of costs is to be decided. - Restriction of the application followed by withdrawal of the opposition. In principle each party bears their own costs. The relevant paragraph of the costs template reads: In the present case the opponent withdrew his opposition following a restriction of the applicant s specification. Such a restriction is equivalent to the partial withdrawal of the application. To this extent the opponent was successful in the proceedings. However, the restriction of the application was more limited than the scope of the opposition. To this extent the applicant was also successful in the proceedings. Consequently, the Office concludes that it is equitable that each party should bear its own costs. However, there may be cases where a different apportionment of costs is made, e.g. if the application was only limited to a very small extent. In such cases the Office may apply Article 81(2) CTMR. 4. Other cases 4.1. Rejection of application pursuant to Article 88(2) Opposition Guidelines, Part 1 Status: March 2004 Page 121

122 Procedural issues It will be very rare that a CTM application will be rejected on the grounds of absence of authorisation. Nevertheless, the case can also arise if an existing representative withdraws from the case and there is no representative appointed within the time limit set. Where the applicant does not file the requested authorisation/appoint a representative within the allotted term, and representation is compulsory, not only is an eventual limitation/withdrawal made without a representative inadmissible, but the application must also be rejected, pursuant to Article 88(2) CTMR (lack of mandatory representation). In practice, if the applicant does not respond to the letter of the Office by appointing a representative, the application is rejected. Once the rejection becomes final, the opposition proceedings are closed by modifying StandL 252 accordingly. In these situations the practice of the OD on costs is as follows. If the deficiency appeared after expiry of the cooling off period a decision on costs is taken in accordance with Article 81(4) CTMR. This article provides that in cases that do not proceed to judgment the costs are at the discretion of the Office. Then the applicant should pay costs. If on the other hand, the same situation arises before commencement of the adversarial part, no decision on costs can be taken as the adversarial part of the proceedings has not yet started. Neither can Rule 19 IR be applied, as this rule only provides for a refund of the opposition fee when the application is withdrawn or restricted and there has been no withdrawal or restriction Rejection of application due to third party observations If the application is rejected due to observations of third parties and these observations were received before commencement of the adversarial part no costs decision can be issued. In the cases where the CTM application has been rejected during the adversarial part of the proceedings each party should pay their own costs Multiple oppositions Complete rejection of the CTM application In cases where there are multiple oppositions against the same CTM application and one leads to the rejection of the CTM application, the Office does not take any action in the other oppositions until the appeal period has Opposition Guidelines, Part 1 Status: March 2004 Page 122

123 Procedural issues elapsed. If the appeal period elapses without an appeal being filed and thus the decision becomes final, the Office closes the other opposition proceedings and the cases do not proceed to judgment. Given that no decision was taken on the merits, the costs are at the discretion of the Opposition Division (Article 81(4) CTMR). The Office is not able to determine who is the winning or losing party, and therefore, applying a principle of equity, each party will bear their own costs. When closing an opposition after commencement of the proceedings, we normally inform the parties that the Office will take a decision on costs in accordance with Article 81 CTMR unless they submit an agreement differing from the general rules in this article (see StandL 250a/b, 253a/b and 254a/b). However, this information is not necessary when an opposition is concluded due to a final decision in another opposition. This is because it does not make any sense to ask the parties to submit a cost agreement in an opposition which was neither terminated by the parties themselves, nor decided on by the Office. Therefore, when we close these oppositions by means of StandL 251 we do not add the cost agreement-paragraph Partial rejection of the CTM application In cases of multiple oppositions which are partially directed against the same goods and services of the CTM application, the outcome of the decision which is taken first might affect the other opposition. Example: if opposition A is directed against class 1 and opposition B against classes 1 and 2 of the CTM application, the situation may arise that first a decision is taken in opposition A rejecting the application as regards class 1. In this case, further processing depends on whether this decision has been appealed or has become final. If the decision has been appealed, a decision must be taken in opposition B evaluating the conflict as regards classes 1 and 2 of the CTM application, since the decision in opposition A has not become final yet. If the decision has become final, a decision must be taken in opposition B only evaluating the conflict as regards class 2 of the CTM application, since the decision in opposition A has become final and class 1 of the CTM application no longer exists. Opposition Guidelines, Part 1 Status: March 2004 Page 123

124 Procedural issues This leads to the question of how to apportion the costs in cases where opposition B is unsuccessful as regards the remaining class 2, but would have been (clearly) successful as regards class 1 of the CTM application. In spite of the fact that the opponent loses the (remaining scope of the) opposition in total, there is in such (or similar) situations the discretionary power to decide that, based on equity reasons in accordance with Article 81(2) CTMR, each party bears their own costs. If such a decision is taken, the special circumstances leading to this finding have to be sufficiently explained in the cost-part of the decision. 5. Other cost issues 5.1. Arguments of the parties The Office informs both parties when it will render a decision on costs. The parties may send arguments. The Office cannot and does not want to examine the moral correctness of the behaviour of the parties during the proceedings Apportionment of costs in cases of joinder Rule 21 IR provides for the Office to deal with multiple oppositions in one set of proceedings. A typical example would be where there are three oppositions against the same mark and the three opponents are related companies and have the same representative. When the examiner has not suspended any of the oppositions the provisions on costs and fees of Rule 21(3) and (4) do not apply. In cases where the opposition succeeds in its entirety the applicant should pay the fees paid by each of the opponents. Thus in the case of the previous example three opposition fees should be paid. As regards the costs, as the cases are treated as one, costs should be awarded only once. However the registries are free make a different apportionment of costs Share the costs of the opposition fee BoA R14/2000 Alpha / alfa The BoA stated that it is equitable to order each party, pursuant to Article 81(2) CTMR to bear their own costs incurred in the opposition proceedings and to share the costs of the opposition fee. The OD interprets Article 81(2) CTMR as only referring to costs and not to fees. Consequently this decision of the Boards is not followed. Opposition Guidelines, Part 1 Status: March 2004 Page 124

125 Procedural issues XVIII. FIXING OF COSTS Art. 81(6) CTMR, R 94 IR The registries of the Opposition Division fix the amount of costs in opposition proceedings on request of one or both parties. Rule 94 IR establishes the costs the losing party must pay and how much he has to pay. 1. Admissibility of the request Art. 81(6) CTMR, R 94(3) IR The request for fixation of costs is only admissible once the decision in respect of which the fixing of cost is required has become final. According to Rule 94(3) IR, sufficient evidence ( a bill of costs ) has to be attached. This evidence takes the form of an invoice attached to the request. The Regulations give no answer to the question within what period of time after the decision has become final the interested party should ask for fixation. With reference to ECJ case-law, it is considered that one year is not enough time to refuse a request for fixation of costs Signing and sending of the fixation Art. 81(6) CTMR, R 94(4) IR In order to avoid that the same person who made the fixation of costs also forms part of the Opposition Division that reviews it, a fixation of costs may not be signed by the person who signed the cost decision or whose name figured on it. StandL 258a/b should be used when sending the fixation to the parties Evidence The interested party must submit a bill of costs (evidence that costs were incurred). Normally this evidence consists of a copy of an invoice from the representative to his client. This evidence is forwarded to the other party together with the fixation. A simple request without any evidence or a mere summary of monthly costs is insufficient. The evidence must show a link between the representative, his client and the opposition. Costs incurred when inquiring about the decision on costs or a possible appeal are not covered by the representation costs for the opposition and cannot be fixed. When a request is made without a bill of costs and/or supporting evidence, the opponent /applicant should be reminded that he should submit the evidence, within a period of two months from receipt of the notification. The following text can be used: Opposition Guidelines, Part 1 Status: March 2004 Page 125

126 Procedural issues Further to your request for fixation of costs for the above opposition, received by the Office on, please note that this request alone is not considered sufficient for fixation, as according to Rule 94(3) IR a bill of costs with supporting evidence must be attached to the request. You are therefore required to provide the Office with an invoice, addressed to your client and referring to the opposition with respect to attorney fees or any other evidence. The evidence must be submitted within two months of receipt of this notification, that is; on or before. When the request contains only a request to refund EUR 350 for the opposition fee, evidence will not be necessary, as it is quite clear that the opposition fee was paid on behalf of the opponent. The bill of costs, generally an invoice, should be addressed to the representative s client (the opponent or applicant). According to Rule 96(2) IR the Office may require that a translation be supplied within a period specified by it. It is recommendable that the bill is specified in order to establish the nature of the costs. A global specification where the representative distinguishes between opposition fee and representation costs is sufficient. It should be noted that a normal bill includes the VAT. 2. Cost of employees Arti. 88(3), 89(1) CTMR, R 54, 94(7)(f) IR Costs of employees cannot be fixed as Rule 94(7)(f) reads: cost of representation within the meaning of Article 89(1) of the Regulation. As this article only refers to professional representatives and not to employees, employees cannot claim representation costs. Article 81(6) CTMR and Rule 94(4) IR do not apply. This is also the case where the employee represents an American company, which has economic connections with the European company where he is employed. This situation is possible under the terms of Article 88(3), but as it is not mentioned in Article 89(1) and thus not covered by Rule 94(7)(f), costs cannot be fixed at EUR 250 in this case either. Consequently, a request for fixation of EUR 250 from a winning employee as payment for his work cannot be accepted as such costs are not covered by the wording of Rule 94(7)(f). If a fixation request only contains costs incurred by an employee (i.e. by the opponent or applicant himself), a letter must be sent informing the parties that Opposition Guidelines, Part 1 Status: March 2004 Page 126

127 Procedural issues fixation of costs is not possible. The letter must also contain a paragraph stating that the interested party can ask for a formal decision within two months. If the request for fixation of costs of an employee contains fees (Rule 94(6) IR) and costs (Rule 94(7)(a)-(e) IR), the request is to be dealt with as a whole. The fees and costs that can be granted are fixed, those that cannot are rejected. In this case Article 81(6) CTMR and Rule 94(4) IR (revision of fixation) do apply. 3. Maximum amounts R 94 IR The maximum amount that can be reimbursed to the opponent is EUR 600 (opposition fee and maximum amount for costs of representation), and to the applicant EUR 250, since he did not pay an opposition fee. 4. Renouncement of costs Where the winning party in opposition proceedings is the opponent, he can decide to only claim the opposition fee of EUR 350 and renounce the costs. In such cases, the opponent does not have to file any supporting evidence and the practice is to deal directly with the opponent s request for the fixing of costs. In order to proceed like this, the opponent must have explicitly renounced his claim to the other costs. If the opponent s intention is not clear from his letter, we must request supporting evidence in order to be able to fix the costs. 5. Currencies/ exchange rates In the decision to fix the costs, the amount mentioned in the bill of costs is mentioned in the original currency used between the opponent/applicant and his representative. It is suggested to use the official abbreviations for the currencies and the translation of the currency in the language in which the decision is made. For the translation of currencies the different language versions of the Official Journal L 395 of can be consulted. If an exchange rate has to be indicated, e.g. invoice in USD, the monthly exchange rate is indicated ( This information is also available on OHIM s Intranet. 6. Confidentiality Opposition Guidelines, Part 1 Status: March 2004 Page 127

128 Procedural issues In some cases representatives do not want their tariffs to be known to third parties. However it is not possible to keep the evidence confidential vis-à-vis the paying party, as this party must know on what grounds the fixation is made. If the winning party requests the Office to keep the evidence confidential, the Office must inform the him that this is not possible. He can then decide to maintain or withdraw the request. 7. Review of fixings of costs Art. 81(6) CTMR, R 94(4) IR If one of the parties disagrees with the fixation of costs, he can ask for review of the decision. The request must state the reasons and be filed within one month after the date of notification of the fixation. It is only deemed to be filed when the fee for reviewing has been paid. 8. Fixation of costs after appeal In cases where the Boards of Appeal remits oppositions to the OD for further prosecution, the fixation of costs done by the OD must cover the two instances, as it is more efficient to deal with the fixation of costs in a single decision. This was decided in an internal agreement between the OD and the BoA. The same principle applies when the Boards confirm OD decisions. In this case, it will be the Boards whose fixation of costs will cover both instances. Opposition Guidelines, Part 1 Status: March 2004 Page 128

129 Procedural issues XIX. REVOCATION On a few occasions the OD has taken a decision revoking its own decision. On all occasions it concerned decisions where the opposition or the CTMA had been withdrawn prior to the date the decision was rendered. As the withdrawal that had been overlooked was valid, in the case of a withdrawal of the opposition a decision was taken on an opposition that at the time of decision no longer existed. In the case of a withdrawal of the CTM application, the opposition had become without object, as the CTMA no longer existed. This practice is to continue under the new Article 78a CTMR (to enter into force end 2004?) Opposition Guidelines, Part 1 Status: March 2004 Page 129

130 Procedural matters: Pending issues XX. CHANGE OF PARTIES (Transfer, change of name, change of representative, interruption of proceedings) 1. Transfer and opposition proceedings 1.1. Introduction and basic principle Art. 17 CTMR A transfer or assignment of an earlier right is a change of ownership of this right. A transfer can be done in several forms, from a simple sale of an earlier mark from A to B, to a company C that gets bought (trade marks included) by company D, to a merger of companies E and F into company G (universal succession), to legal succession (after the owner has died, the heirs become the new owners). When a transfer is made during opposition proceedings, several different 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. The basic principle is that the new owner substitutes the old owner in the proceedings. The practice of the Office when dealing with transfers is described in paragraphs 1.2 (the earlier registration is a CTM registration), 1.3 (the earlier registration is a national registration) and 1.4 (transfer of a contested CTM application during opposition proceedings Transfer of earlier CTM Art. 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. ATMDD is competent for dealing with requests for registration of a transfer 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 Opposition Guidelines, Part 1 Status: March 2004 Page 130

131 Procedural matters: Pending issues 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 CTM on which the opposition is based has been transferred and he must file a request for registration of the transfer. As mentioned above, as soon as the request is received by the Office, the new owner may already make statements. However, he only becomes party to the proceedings once the transfer is registered. In practice, once the OD 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 he does not want to continue the proceedings, the opposition is considered withdrawn. If, for one reason or other, the transfer is never registered, but there is evidence of the transfer, the opposition has become unfounded, as the opponent is no longer the owner of the earlier right. He must be informed that the OD will reject the opposition as such unless he withdraws the opposition 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 by a new owner. To partial transfers the same principles as for transfer of only one of more CTM registrations on which the opposition is based apply. These principles are described in paragraph below Opposition based on more than one earlier CTM When an opposition is based on more than one earlier CTM and these marks are/have been transferred to the same new owner during the opposition proceedings, the foregoing applies. It becomes different when only one of the earlier CTMs is/has been transferred. In this case the new owner may also become opponent, so that there are two. The opposition will be kept as one. In general both opponents have one representative. If one of the opponents wants to withdraw, this is to be accepted independently of whether the other wants to continue. Of course, if the proceedings are continued it will be based only on the rights of the opponent who did not withdraw. No separate decision on costs will be taken. Opposition Guidelines, Part 1 Status: March 2004 Page 131

132 Procedural matters: Pending issues 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 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. As there are different national practices, it is not obligatory to submit a copy of the request to register the transfer with the national office. OD does not require the new owner to confirm that he wishes to continue the proceedings. As long as the evidence of the transfer is in order, the new owner is accepted as new opponent. If he informs the Office of the transfer, but does not submit (sufficient) evidence thereof, the opposition proceedings have to be suspended while the new owner is given two months to provide evidence of the transfer. Nevertheless, in those Member States where this is a requirement for a transfer to have effect against third parties, the transfer must have been 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. As it is not in the interest of the applicant if the proceedings are delayed, the new owner must be set a reasonable time limit to provide this evidence. Opposition Guidelines, Part 1 Status: March 2004 Page 132

133 Procedural matters: Pending issues 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 he is not the owner anymore the opposition has become unfounded, as the opponent is no longer the owner of the earlier right. He must be informed that the OD will reject the opposition as such unless he withdraws the opposition. If the new owner provides the required evidence and informs the Office that he does not want to continue the proceedings, the opposition is considered withdrawn. A deed of transfer, signed by assignor and assignee, will normally be submitted as evidence of a transfer. A full contract that shows the change of ownership of the registration is of course also acceptable. Although it is the OD that is in charge of the substantive implications of the change, the changes in Euromarc are made by the ATMDD. It may be that ATMDD informs the OD that a claim to a change of owner has been received at the Office. It is however up to the OD to verify if evidence of the transfer has been submitted. If not, the opposition proceedings have to be suspended while the new owner is given two months to provide evidence of the transfer. ATMDD will have to be informed if and when the change in Euromarc can go ahead 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. To partial transfers the same principles as for transfer of only one of more national registrations on which the opposition is based apply. These principles are described in paragraph below Opposition based on more than one earlier national registration When an opposition is based on more than one earlier national registration and these are/have been transferred to the same new owner during the opposition proceedings, the foregoing applies. It becomes different when only one of the earlier national rights is/has been transferred. In this case the new owner may also become opponent, so that there are two. The opposition will be kept as one. In general both opponents have one representative. If one of the opponents wants to withdraw, this is to be accepted independently of whether the other wants to continue. Of course, if the proceedings are Opposition Guidelines, Part 1 Status: March 2004 Page 133

134 Procedural matters: Pending issues continued it will be based only on the rights of the opponent that did not withdraw. No separate decision on costs will be taken. In practice, the new opponents will be 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 Transfer of the contested CTMA When during opposition proceedings the contested CTMA 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 CTMA and the opponent. When ATMDD receives a request for registration of the transfer, it informs the OD. As soon as the request has been received, the new applicant may make statements to the Office with a view to observing time limits; there is no need to suspend the procedure. The OD informs the opponent of the transfer and the proceedings can continue. Of course, before a decision is taken the transfer will have to be registered Partial transfer of a contested CTM application. R 32(4) IR When there has been a partial transfer of a (contested) CTMA, 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 OD also has to create a new opposition(s) file against the new CTM application, since it is not possible to deal with one opposition against two separate CTM applications. Please note however that this is only the case when some of the originally contested goods and services are maintained in the old CTMA, and some in the newly created CTMA. For example: Opponent X opposes all goods of CTMA Y, applied for in class 12 for apparatus for locomotion by land and air, and for clothing and footwear in class 25. CTMA Y is partially transferred, and split into CTMA Y' for apparatus for locomotion by land and clothing, and CTMA Y'' for apparatus for locomotion by air, and footwear. Art. 17, 23 CTMR As when the opponent filed his opposition there was only one opposition fee to be paid, he is not requested to pay a second fee for the new opposition Opposition Guidelines, Part 1 Status: March 2004 Page 134

135 Procedural matters: Pending issues created after the split of the CTMA. The transfer, even if it was requested before the opposition was filed, has effect vis-à-vis third parties only after the entry in the Register. Thus the payment of only one opposition fee was properly effected because at the time of filing the opposition was only directed against one CTM application (the only one). Therefore the new opposition will be created without the payment of a new opposition fee. Regarding the apportionment of costs, the OD 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). 2. Change of name As mentioned above, a change of name does not imply a change of ownership. ATMDD is in charge of such changes and will inform OD about any changes in the name of the CTM applicant. 3. Change of representatives During the proceedings there may be changes of representatives. This can occur in several different situations. It can happen that either the opponent or the applicant informs the Office that he wishes to designate a (new) representative. It can happen that the representative himself resigns or that the representative is deleted or suspended from the list of professional representatives. It can also happen that due to a transfer the opponent or applicant changes and that they wish to be represented by new representatives. When there is a change of representative during opposition proceedings, the other party will have to be informed by sending the other party a copy of the letter and of the authorisation (if submitted). Art. 88 CTMR When a representative resigns, the proceedings are continued with the opponent or applicant himself if they are from the EU. The other party is informed of the resignation of the representative. If the party whose representative has resigned is from outside the EU, a letter has to be sent indicating that a new representative must be appointed. Opposition Guidelines, Part 1 Status: March 2004 Page 135

136 Procedural matters: Pending issues 4. Interruption of proceedings due to decease, legal incapacity of a party or a representative R 73 IR Rule 73 IR deals with interruption of proceedings. Paragraph 1 distinguishes three situations: R 73 (1) IR Opposition proceedings before the Office shall be interrupted: (a) when the CTM applicant or owner has died or cannot take legal actions (for example because he has been declared insane by a court). (b) when the CTM applicant is prevented from continuing the proceedings before the Office owing to legal reasons (for example when the applicant is in a process of bankruptcy). (c) when the representative of an applicant has died or cannot take legal actions as a result of some action taken against his property. Rule 73 IR only refers to the applicant and his representative and does not mention anything about other parties, such as opponents. There are no explicit rules concerning the opponent. In the absence of relevant provisions, the Office applies the same rules are applicable for the opponent Death or legal incapacity In cases of death of the applicant or of the person authorised by national law to act on his 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 Bankruptcy In cases of bankruptcy (Rule 73(1)(b) IR), the OD considers that the Rules cover both the situation where a bankruptcy has been formally declared and the situation where legal action has been initiated to declare a party bankrupt. In practice, these cases normally start with a letter from the representative informing the Office that he resigns as court action has been initiated to declare his client bankrupt. Sometimes the representative further indicates who acts as the trustee in the bankruptcy. If there is no information as to who represents the bankrupt party, the OD has no choice but to communicate with the bankrupt party himself. It is not up to Opposition Guidelines, Part 1 Status: March 2004 Page 136

137 Procedural matters: Pending issues the OD to investigate. Even though the bankrupt party is not allowed to undertake binding legal acts, generally he still receives post, or, if not, the post is delivered automatically to the trustee as long as there is one. When the notification is returned to the Office as undeliverable, the normal rules for public notification apply. However, if the OD is informed who the trustee in the bankruptcy is, for practical reasons, it should try to contact this person and explain to him about the opposition proceedings. As the trustee cannot be accepted as party to the proceedings without evidence that the applicant or opponent has filed for bankruptcy and that the Court has nominated the trustee to take care of the bankruptcy, the proceedings should be interrupted and the trustee should be asked for evidence. If evidence is filed, the OD should be practical. As the trustee is normally looking for money on behalf of the bankrupt party in order to pay off debts, he will not be interested in generating costs. Therefore, the OD should not require the evidence to be translated into the language of the proceedings. Once this evidence is received (and the Office is thus informed of the identity of the person authorised to continue the proceedings before the Office), the proceedings are resumed from a date to be fixed by the Office. The other party must be informed. For reasons of equity, when resuming the proceedings, new periods of time are fixed. For example, when the proceedings were interrupted ten days before the opponent had to file observations, when resuming he should be given a new period of two months, not the ten days he had left at the moment of the interruption Death or prevention for legal reasons of the representative of the applicant/opponent before OHIM to act R 73(3) IR In the case referred to in paragraph 1(c) of Rule 73 IR, the proceedings shall be resumed when the Office has been informed of the appointment of a new representative of the CTM applicant. According to Rule 73(3) IR, if the Office has not been informed of the appointment of a new representative within three months after the beginning of the interruption of the proceedings, it shall inform the applicant that his CTM application is deemed withdrawn in the cases where he is obliged to have a representative because he does not have a domicile or seat in the EU. However, this is only the case when the applicant, after having been asked to appoint a new representative, does not comply. Opposition Guidelines, Part 1 Status: March 2004 Page 137

138 Procedural matters: Pending issues In all other cases, the proceedings will continue with the applicant/opponent himself. Opposition Guidelines, Part 1 Status: March 2004 Page 138

139 OPPOSITION GUIDELINES Part 2 Chapter 1: Identity Opposition Guidelines Part 2 Chapter 1, Identity - Status: March 2004 Page 139

140 Introduction to Part 2 Chapter 1 deals with the concept of identity, i.e. identity of the marks and the goods and services. Some sections of this chapter lay the general groundwork for the assessment of goods and services. These sections are therefore also of relevance in the context of similarity of goods and services, which is the subject of Part B of Chapter 2. Chapter 2 focuses on the core concept of inter partes proceedings: likelihood of confusion. Part A deals with general aspects relating to that concept. It sets out, in particular, the pertinent case law of the Court of Justice and explains how to assess likelihood of confusion. Part B addresses similarity of goods and services. It discusses the various relevant factors, namely nature, purpose, method of use, complementary and competitive character, channels of distribution, the relevant public, and the usual origin of the goods and services. Part B also shows how to apply these factors to some specific categories of goods and services. The subject of Part C is the similarity of the signs. It covers, in particular, the criteria that should be applied for the visual, phonetic and conceptual comparison. Part C also specifically elaborates on signs that are partly or wholly included in other signs. The final Part D of Chapter 2 corresponds to the final part of decisions in opposition cases. It explains how the global assessment of all the factors that are relevant for determining likelihood of confusion must be made. Part D deals with, in particular, the distinctiveness of the earlier mark, the impact of the kind of goods and services on the assessment of the similarity between the signs and the degree of sophistication and attention of the relevant public. Opposition Guidelines Part 2 Chapter 1, Identity - Status: March 2004 Page 140

141 Chapter 1: Identity INDEX CHAPTER 1: IDENTITY ART. 8(1)(a) CTMR I. THE NOTION OF IDENTITY Identity as a condition for the application of Article 8(1)(a) Identity of goods and services Terminology Determining the wording of the goods and services to be considered The proper language version of the specifications The relevant scope of the specifications Determining the meaning of the wording of the goods and services to be considered In general The use of identical terms or synonyms The earlier mark includes the goods/services of the CTM application The CTM application includes the goods/services of the earlier mark One specification includes the goods/services of the other and the broader specification uses all or part of the indications of the class heading of one class The Office s approach to the use of the class heading or part of its indications Consequences of the use of (part of) a class heading for identity Restrictions: Identity of goods/services required Strict identity Word marks Differences in typeface and size Differences in the use of small/capital letters Use of word marks in colour Use of word marks with generic or descriptive additions D marks II. IDENTITY AS A GROUND Opposition Guidelines Part 2 Chapter 1, Identity - Status: March 2004 Page 141

142 Identity and likelihood of confusion: Identity CHAPTER 1: IDENTITY ART. 8(1)(a) CTMR Article 8 (1)(a) CTMR provides that upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered: if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected. I. THE NOTION OF IDENTITY 1. Identity as a condition for the application of Article 8(1)(a) The wording of Article 8(1)(a) requires an identity between both the signs concerned and the goods and services covered. Whether the respective marks are identical or not is an objective fact that can be directly established from the proof on file. Hence, the fulfilment of this condition requires nothing more than a simple comparison of the signs or goods in question, and identity appears from a mere observation of the marks in question and their specifications. The protection conferred on the earlier mark by Article 8(1)(a) is absolute. The wording of this provision does not make its applicability dependent on any additional requirements. In particular, there is no need for any likelihood of confusion to be established. It is sometimes said that in these situations confusion is inevitable because both the signs and the goods in dispute are identical, as the public will be in no position to distinguish between the marks. 48/1998 GALLUP / GALLUP (EN) However, the provision in Article 8 (1)(a) CTMR is not based on this presumption. The specific meaning of identity in the case of signs and goods respectively will be discussed independently, as each context presents certain particularities that call for a separate treatment. 2. Identity of goods and services 2.1. Terminology Goods and services are products, and therefore the term products may also be used to refer to both goods and services. This is in line with the trade Opposition Guidelines Part 2 Chapter 1 Status: March 2004 Page 142

143 Identity and likelihood of confusion: Identity custom that not only refers to goods as products but also to services. A finance product, for instance, falls under the category services. In many decisions taken by the OD in the past the term products is used in a narrower sense, namely as a synonym for goods only Determining the wording of the goods and services to be considered The proper language version of the specifications As a preliminary matter, the correct wording of the specifications under consideration must be identified Community trade marks (earlier right or challenged application) An application for a Community trade mark shall be published in all the official languages of the Community (Article 116(1)). Likewise, all entries in the Register of Community trade marks shall be made in all these languages (Article 116(2)). Publications of both applications and entries made in the Register are made in the Community Trade Marks Bulletin (Rule 85(1) and (2)). In practice occasional discrepancies may be found between - the translation of the wording of the specification of a Community trade mark (application or registration) published in the Community Trade Marks Bulletin, and - the original wording as filed. In case of such discrepancy, the text in the language of the Office in which the application for the Community trade mark was filed is the authentic version. If the application was filed in an official language of the European Community other than one of the languages of the Office, the text in the second language indicated by the applicant is authentic (see Article 116(3)) MOVICOM / MOBILCOM (EN), 3091/2000 HOM / XOM (FR) Earlier national marks and international registrations In case of doubt the original language, and not the translation into the language of the proceedings according to Art. 115 and Rule 17(2), is controlling. As far as Madrid marks are concerned, the original language is always French, as far as Protocol marks are concerned, the original language may be either English or French or Spanish. Opposition Guidelines Part 2 Chapter 1 Status: March 2004 Page 143

144 Identity and likelihood of confusion: Identity The relevant scope of the specifications The consideration of the goods and services must be based on the wording indicated in the respective specifications. The actual or intended way of use of the goods is not relevant for the examination. 503/1999 PLENUR (cl. 5) / PLENUM (cl. 5) (EN) However, if proof of use of the earlier mark is validly requested and the submitted evidence is sufficient only for part of the goods in the specification, the examination is restricted to these goods. Likewise, when the opponent shows that there have been proper reasons for non-use, only those goods or services for which such proper reasons exist are to be compared. (See Article 43(2).) 1507/2001 DIADUR / VIADUR (EN) 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, - have not been properly substantiated (e.g. only a partial translation of the specification was filed), or - have been expressly excluded by a formal restriction of the basis of the opposition. 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 specification of the application, or the scope of the opposition, or of both, will limit the goods and services to be considered. Furthermore, a grammatical interpretation of the wording of the specification might be required to determine the scope of the goods and services of the two specifications that must be considered. 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, or other equivalent) indicates that the specific products are only examples of items included in the category, and that protection is not restricted to them. 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 had to be compared with the goods of the other mark. 546/1999 SYS (cl. 1) / SYSTOL (cl.1) (EN). Opposition Guidelines Part 2 Chapter 1 Status: March 2004 Page 144

145 Identity and likelihood of confusion: Identity 2.3. Determining the meaning of the wording of the goods and services to be considered In general 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 specification 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. 97/1999 MOTOR JEANS (cl.25) / MOTO (cl.25) (EN) In cases of doubt about the exact meaning of the terms used in the specification, these terms have to be interpreted from a commercial perspective. For instance, both articles for gifts and shirts may be offered as presents, but in commercial terms the goods articles for gifts are understood as decorative objects or memorabilia specifically designed and sold in special outlets, to which category shirts generally do not belong. 10/1999 M(cl.39) / M (cl.20, 22, 25) (EN), 964/1999 THE GREY LINE (cl.39) / GREYLINE (cl.18, 25, 28) (EN) The use of identical terms or synonyms Identity between the goods or services in dispute must be established on the basis of the wording of the relevant parts of the specifications of the two marks that have been identified in accordance with the principles set out in the preceding section 2.2. Identity is obvious where the goods or services to be compared are listed in both specifications in exactly the same terms. 35/1998 SIENA / LA SIRENA (FR). Where this is not the case, the terms of the respective specifications must be interpreted in order to show that they are in fact synonyms, i.e. that their meaning is the same. The interpretation must be made from a commercial perspective. Examples: Interpretation of the goods or services Bicycle is a synonym for cycle. 1548/2001 DRIVE (fig) / I-DRIVE (EN) Interpretation of other terms used in the specification Opposition Guidelines Part 2 Chapter 1 Status: March 2004 Page 145

146 Identity and likelihood of confusion: Identity The meaning of the words articles and requisites is identical. Therefore, the goods smokers requisites in class 34 and smokers articles that are also included in class 34 are identical. 1109/2001 EXPRESS / STATE EXPRESS (EN) In doubt the conclusion should be against identity. A different question arises where one of the two specifications contains generic terms designating a broad category (e.g. vehicles) which may include the specific goods and services of the other mark (e.g. buses). This may be the case in respect of the earlier right or the of CTM application. This question is discussed in detail in the following sections 2.4. and The earlier mark includes the goods/services of the CTM application Where the specification of the earlier right includes a generic term that covers the goods or services of the contested application in their entirety, the goods and services will clearly be identical. Automobiles and parts and fittings thereof (CTMA) were considered to be included in motor land vehicles and parts and fittings therefor (earlier right) and, therefore, were considered identical. R 969/ S-TYPE / S-CLASS (EN) Pasta (the applicant s specification) designates any of several variously shaped edible preparations made from a flour and water dough, such as spaghetti, and thus belongs to the general category of preparations made from cereals (protected by the opponent s trade marks). Therefore, the conflicting goods were considered identical. 1769/2001 MEGABITE/MEGABITE (fig) (EN) Caveat: There are goods/services the scope of which may be defined in various manners. Clothing, for instance, may or may not be interpreted as including footwear. The Opposition Division holds that footwear is not included in clothing, the essential reason being that footwear appears as a separate item in the same class /2001, Underground, Underground Shoes / London Underground (fig) (EN), 3175/2000, UNDERGROUND, Underground Shoes / London Underground (fig) (EN). Opposition Guidelines Part 2 Chapter 1 Status: March 2004 Page 146

147 Identity and likelihood of confusion: Identity 2.5. The CTM application includes the goods/services of the earlier mark If one or more goods/services specifically designated in the earlier mark are covered by a generic term used in the CTM application, the final consequence of the legal assessment will be the same as in the opposite situation: the goods/services are considered identical as well. This result is based on the following reasoning: On the one hand, the goods or services of the earlier mark are identical to the broad category as such, to the degree that they are included in it. Example: The CTM application is for articles of clothing, the earlier mark protects jeans. R 0260/ MOTO / MOTOR (fig) (EN) On the other hand, the fact that the goods/services protected by the earlier mark are covered by the generic term of the CTM application does not necessarily render the rest of the goods or services designated by the same generic term identical to the goods and services of the earlier mark. A broadly defined category may consist of an indefinite number of goods/services which might be practically impossible to identify, and often the kind of link that binds them together will not be strong enough to allow for a finding of identity, or, as the case may be, similarity of the goods/services of the earlier mark with all the goods/services that are included in the generic term of the CTM application. Nevertheless, it must be borne in mind that the application of Article 8(1)(a) does not require that all the goods or services potentially in the same category are identical with the goods/services of the earlier mark. The goods/services are examined as they appear in the respective specifications and if identity has already been ascertained between the individual goods/services and the category as a whole, the identity requirement of the law is met. In view of Article 74(1), the Office does not have the authority to split up on its own initiative the broad term of the CTM application. Examiners should inform the applicant that the comparison of goods and services presents a particular problem due to the broad term used and invite him to specify his goods or services (Article 43(4)) whenever it is reasonable to assume from the facts of the case that such invitation could lead to a friendly settlement. If the applicant, however, does not specify/restrict the list of goods, or does so in an insufficient way, the Office will treat the application s broad term as a single unit and reject it as a whole. In case R 0895/ ROPLAN / RUPLAN the Board of Appeal reversed the OD s decision, which considered development of computer programs for data processing to be identical or similar to development of new products in class Opposition Guidelines Part 2 Chapter 1 Status: March 2004 Page 147

148 Identity and likelihood of confusion: Identity 42. The Board amended ex officio the specification of the application to exclude the opponent s services. This decision is not followed by the OD. Consequently, the practice to be followed in this context is to consider the respective goods identical because the specific product (X) is included in the general category (X+). Since the Office cannot ex officio split the general category (X+), the applicant must restrict the application by eliminating the specific category from the specification in order to avoid a finding of identity /1999 SETTIMA / CERTINA (EN), 1271/2000 NP / NATIONAL POWER (EN), 1267/2001 MOVICOM / MOBIL COM (EN). Only if some of the specific goods/services included in the general category, e.g. an item of a class heading, are also listed independently in the CTM application, will it be necessary to extend the examination any further. In such cases, the result of each individual comparison does not depend on the finding concerning the general category and an identity may be denied if some of the independently listed goods of the CTM application are not identical to the goods of the earlier mark. Example: The CTM application covers vehicles (general category) as well as buses, aircraft, trains (included in vehicles), for example as follows: vehicles, buses, aircraft, trains. Where, for instance, the earlier mark is protected for buses, identity will be found with respect to vehicles and to buses but not for aircraft or trains. The question arises how to proceed with the comparison of goods/services when the list of the CTM application consists of a general category, to which goods or services are not added independently of the general category but only as illustrations of the general category. To cover this situation, the example above can be amended, so that the specification of the CTM application reads: Vehicles, in particular buses, aircraft, trains. The earlier mark, as in the example above, is protected for buses. The OD practice regarding this question is as follows: All specified goods (buses, aircraft, trains) are in the general category (vehicles). If the application is rejected for the general category, the remainder of the specified goods (buses, aircraft, and trains) will be rejected as well. The CTM applicant can avoid this result by deleting the general category vehicles, the indication in particular, and the specific category buses One specification includes the goods/services of the other and the broader specification uses all or part of the indications of the class heading of one class Opposition Guidelines Part 2 Chapter 1 Status: March 2004 Page 148

149 Identity and likelihood of confusion: Identity The Office s approach to the use of the class heading or part of its indications A special issue regarding the application of the preceding sections 2.4. and 2.5. arises where the wording of the specification consists of the class heading provided for in the Nice Classification or one or several indications of the class heading. The Office does not object to the use of any of the class heading or one or several of its general indications as being too vague or indefinite, contrary to the practice which is applied by some national offices in the European Union and in third countries in respect of some of the general indications of the class heading or the class heading as a whole. The Office interprets the scope of the class heading or part of it in specifications for Community trade marks as follows: - The 34 classes for goods and the 11 classes for services comprise the totality of all goods and services. As a consequence of this the use of all the general indications listed in the class heading of a particular class constitutes a claim to all the goods or services falling within this particular class. - Similarly, the use of a particular general indication found in the class heading will embrace all of the individual goods or services falling under that general indication and properly classified in the same class. For example, the use of the general indication "pharmaceutical and veterinary preparations" in cl. 5 will embrace all pharmaceutical preparations regardless of their composition or indication. - Furthermore, where it may not be obvious under which of several general indications particular goods or services fall, there is nevertheless a classification-based reasoning for the proper classification. For example, "computer software" is classified in cl. 9 because of the presence of the general indication "data processing equipment and computers" in that class, because computer software is seen as directly related to the corresponding apparatus or equipment. Therefore, when a specification contains "data processing equipment and computers" as a general indication, this will be considered as embracing also computer software. On the other hand, where a specification lists general indications in cl. 9 but not "data processing equipment and computers", computer software will not be considered as falling within the specification Consequences of the use of (part of) a class heading for identity The rule that the use of the class heading of a particular class means that all the goods/services within that class are included has the consequence that when the later Community trade mark application or registration contains goods or services properly classified in that same class, the goods or services are identical with the goods or services in the earlier mark. Opposition Guidelines Part 2 Chapter 1 Status: March 2004 Page 149

150 Identity and likelihood of confusion: Identity When the specification does not include all of the general indications of a particular class heading, but only one or some of them, identity will be found only when the particular item falls under the general indication. For example, when the later mark is for "computer software", and the earlier mark is protected for "data processing equipment and computers", or when the earlier mark is protected for "pharmaceutical preparations" and the later mark is for a specific medicine, the goods will be identical. These principles do not affect the practice set out above in sections 2.4. and 2.5. There is identity between a good or service covered by one specification that falls under a class heading of the other specification. It does not matter which specification belongs to the earlier mark and which to the later mark Restrictions: Identity of goods/services required The question of whether goods/services are identical also arises where the applicant restricts the specification. By restricting the specification, the applicant must not extend its scope. This means that the goods/services with which the applicant wants to replace the original goods or services must be included in and thus be partly identical with those goods or services. (See admissibility and procedural guidelines, Part C IX.) Example: Diagnostic reagents do not widen the specification of the CTMA because they are a type of pharmaceutical preparations, which were included in the initial version of the specification. R 540/ GRI / GRY (EN) Where the specification that is to be restricted comprises all or part of the indications of a class heading, the situation is analogous to that regarding identity that was discussed in the previous section. The following principles apply: It constitutes a proper restriction (and not an inadmissible extension of the list of goods and services) when the list of goods and services of a Community trade mark application or registration that originally contained the complete class heading of a particular class is composed of one or more specific goods or services properly classified in the same class and the class headings. Similarly, it constitutes a proper restriction (and not an inadmissible extension of the list of goods and services) if a specification is limited by deleting a general indication and instead selecting one or more specific items falling under the general indication. In the example cited above in section 2.6., it is proper to restrict a specification to "computer software" when the original specification contained "data processing equipment and computers". Yet it would not be proper to do so when this general indication was not found in the original specification. Opposition Guidelines Part 2 Chapter 1 Status: March 2004 Page 150

151 Identity and likelihood of confusion: Identity 3. Identity of signs 3.1. Strict identity The concept of identity is interpreted strictly as regards the signs. This approach has been confirmed by the 3rd Board of Appeal in its Decision R-1/ of 19/06/2002 Arthur et Felicie. The Board has argued that the concept of identity has to be defined in relation to the object of Article 8(1)(a), bearing in mind the nature and effects of the rights encompassed by the Community trade mark. The Board states that the protection granted by Article 8(1)(a) CTMR is of an absolute nature because it is not conditional on the existence of likelihood of confusion nor does it require consideration of the dominant elements of the sign. In the light of this automatic and absolute protection, the Board concludes that the interpretation of the concept of identity has to be strict in order not to contradict the difference the Regulation has introduced between the ground of Article 8(1)(a) CTMR and that of 8(1)(b) CTMR Word marks Word marks are marks consisting of letters, numbers and other signs reproduced in the standard typeface used by the respective office. This means that as regards these marks no particular figurative element or appearance is claimed. Word marks are also such marks which, although they are registered as figurative marks nevertheless are reproduced in a standard typeface, which is however different from the one used by the respective office Differences in typeface and size Therefore, trade marks that only differ in a typeface or size should be considered identical. This may be different however if the typeface is a particular one, such as particular script typefaces, so that the overall appearance of the word mark is changed to that of a figurative mark Differences in the use of small/capital letters Changing the letter size or changing between small and capital letters is customary when using word marks. Therefore, whenever the only difference between the signs lies in these changes the signs will continue to be identical. However, where the mark is registered with an unusual spelling - such as capital letters in the middle, unusual initial small letter, etc. - and the used Opposition Guidelines Part 2 Chapter 1 Status: March 2004 Page 151

152 Identity and likelihood of confusion: Identity form does not have the same appearance (or vice versa), such use will be analysed under the variation rule (Article 15(2)(a) CTMR). 314/2000 EN SEMCO Semco Identical 2451/2000 EN SAVANNAH savannah Identical 44/1999 EN TELIA teeli Not Identical 36/1998 FR ENIGMA ENIGMA ITALY Not Identical 1525/1999 EN NOVALLOY NOVALOY Not Identical 73/1998 DE Primadonna PRIMADONNA Not Identical Use of word marks in colour Word marks are registered in black and white. It is customary to use marks in colour. Such use does not constitute a variant but identical sign Use of word marks with generic or descriptive additions Where a word mark differs of another mark only in the presence of a generic indication of the product or descriptive term that is not integrated into the mark, this will not affect the consideration of the signs as identical. Additions which are just indications of characteristics of the goods and services, such as their kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the services, do in general not prevent concluding that two signs are identical. 3.3 Figurative marks When comparing figurative marks, if the only difference between the sign is the use of colour or black&white, the conclusion on identity can be maintained unless this difference brings a change in the overall impression of the mark. Similarly, adding word elements to a figurative mark will generally not contradict the conclusion of identity if such word elements are descriptive or generic indications or another (word) marks. On the other side, any addition different to those aforementioned will lead the signs to be considered not identical. Opposition Guidelines Part 2 Chapter 1 Status: March 2004 Page 152

153 Identity and likelihood of confusion: Identity 31/1998 EN BURGO 92/2001 FR EPOCA 1270/1999 IT 2455/2000 EN SAVANNAH 204/2001 ES RENOVA D marks 3D marks are of different types. Some 3D marks are objects used as marks (such as figurines on the outside of cars). They are often used in varying sizes. Such variations do not affect a conclusion on identity. Opposition Guidelines Part 2 Chapter 1 Status: March 2004 Page 153

154 Identity and likelihood of confusion: Identity II. IDENTITY AS A GROUND Where Article 8(1)(a) is the only ground claimed and an identity between the signs and/or the goods cannot be established, the opposition will nevertheless be examined on the ground of likelihood of confusion, Article 8(1)(b), because the grounds in Article 8(1) are considered as so related that an opponent claiming identity will be taken as claiming also likelihood of confusion. The former practice of the OD, according to which the examination was concluded and the opposition was rejected, was held to be erroneous by the Board of Appeal. R 165/ ENIGMA ITALY / ENIGMA (FR) Other Board decisions have affirmed this approach. Opposition Guidelines Part 2 Chapter 1 Status: March 2004 Page 154

155 OPPOSITION GUIDELINES Part 2 Chapter 2: Likelihood of confusion A. General Remarks B. Similarity of Goods and Services Opposition Guidelines Part 2 Chapter 2, Likelihood of confusion - Status: March 2004 Page 155

156 Chapter 2: Likelihood of Confusion INDEX CHAPTER 2 - LIKELIHOOD OF CONFUSION A. GENERAL REMARKS I. THE STATUTORY FRAMEWORK II. THE INTERPRETATION OF THE STATUTORY FRAMEWORK BY THE COURT OF JUSTICE Case C-251/95 Sabèl BV v Puma AG, Rudolf Dassler Sport [1997] OJ OHIM 1/ Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1998] OJ OHIM 12/ Case C-342/97 Lloyd Schuhfabrik Meyer v Klijsen Handel BV [1999], OJ OHIM 12/ Case C-425/98 Marca Mode CV v Adidas AG and Adidas Benelux BV [2000], OJ OHIM 9/ III. THE COURT S DEVELOPMENT OF A DEFINITION OF LIKELIHOOD OF CONFUSION The essential function of a Community trade mark: the guarantee of the identity of origin Definition of likelihood of confusion The public s attribution of the same origin to the goods or services The origin: economically-linked undertakings Global assessment of likelihood of confusion required Weight of relevant factors may vary Relevant factors are interdependent Assessment of likelihood of confusion: Overview of the criteria Likelihood of confusion: questions of fact and questions of law Relevant public Analysis of terms Relevant public to be defined Public vs. consumers ; pre-sale and post-sale confusion The terms customer and consumer Use of term end users Opposition Guidelines Part 2 Chapter 2, Likelihood of confusion - Status: March 2004 Page 156

157 6.2. Relevant public: Meaning for the likelihood-of-confusion analysis Likelihood of confusion for a significant part of the relevant public is sufficient Similarity of signs Similarity of goods/services The relevant point in time IV. TYPES OF LIKELIHOOD OF CONFUSION Confusion between the marks themselves (direct confusion) No confusion between the marks themselves but confusion as to origin (indirect confusion) V. THE STRUCTURE OF OPPOSITION DECISIONS Goods/services clearly dissimilar Signs clearly dissimilar CHAPTER 2: LIKELIHOOD OF CONFUSION B. SIMILARITY OF GOODS AND SERVICES I. INTRODUCTION II. THE SPECIFICATION OF GOODS AND SERVICES In general The Nice Classification Listing of products in the same class not conclusive of similarity The Nice Classification as a tool for interpretation of the specification III. THE RELEVANT TERRITORY IV. SIMILARITY OF GOODS AND SERVICES: A MATTER OF DEGREE Introduction Assessment of the degree of similarity of the goods and services Express and consistent answers required How to make the assessment of similarity of goods and services In general Opposition Guidelines Part 2 Chapter 2, Likelihood of confusion - Status: March 2004 Page 157

158 Similarity of signs and distinctiveness of earlier mark: impact on likelihood of confusion but not on similarity of goods/services Absolute outer limit of similarity Borderline cases (remote similarity v dissimilarity) V. SIMILARITY OF GOODS: FACTORS CONSIDERED General principles The specific similarity factors applied to the comparison between goods and goods Introduction: The distinction between factors may be difficult Nature General considerations The various features of goods defining their nature Relation to other factors Purpose Purpose defined Determining the proper level of abstraction Examples of same/similar and different purposes of goods/services Consequences of different purposes on the decision on similarity Relation to other factors Method of use How to properly distinguish the factors nature purpose method of use Complementary Goods Principles General examples Accessories Complementary character defined by consumer habits Auxiliary or ancillary goods Sales promotion by manufacturers of goods or providers of services Relation to other factors Goods in competition Distribution channels, in particular placement in the same points of sale Major categories of distribution channels The relevance of the same distribution channels in general The relevance of the same sales outlets in particular Relation to other factors The relevant public, i.e. the actual and potential customers Principles Diverging publics weigh against similarity Relation to other factors Usual origin Opposition Guidelines Part 2 Chapter 2, Likelihood of confusion - Status: March 2004 Page 158

159 Usual origin, i.e. the undertakings in control Same or similar production places and/or methods of manufacture Relation to other factors Similarity of goods: raw materials, ingredients and parts / components / fittings Raw materials Ingredients of prepared food Parts, components and fittings The comparison of services with services Nature Complementary services Complementary character (similarity) accepted Complementary character (similarity) denied Services in competition The relevant public Usual origin The comparison between goods and services In general Services usually provided to customers without the need to purchase the corresponding goods (or vice versa) Services ancillary to goods, i.e. usually provided together with goods (or vice versa) Goods and services dissimilar Goods and services may be (remotely) similar VI. SPECIFIC GOODS AND SERVICES COMPARED IT/telco goods and services Similarity of retail services among themselves and of goods and retail services Footwear, clothing, headgear, handbags, accessories Footwear and clothing are similar Headgear and clothing are similar Handbags and clothing are similar Specific accessories to clothing Pharmaceuticals Pharmaceuticals and pharmaceuticals Pharmaceuticals and cosmetics VII. INTERRELATION OF FACTORS Predominant Factors Interdependence of factors VIII. CONCLUSION Opposition Guidelines Part 2 Chapter 2, Likelihood of confusion - Status: March 2004 Page 159

160 Identity and likelihood of confusion: General remarks CHAPTER 2 - LIKELIHOOD OF CONFUSION A. GENERAL REMARKS I. THE STATUTORY FRAMEWORK The basic legal requirements for determining likelihood of confusion under the Community Trade Mark Regulation are laid down in Article 8(1)(b) and the 7 th recital to that Regulation. Article 8(1)(b) states that: Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. Likelihood of confusion constitutes the specific condition for the protection afforded by a Community trade mark. This is expressed in the seventh recital to the CTMR, which mentions a number of factors relevant for the interpretation of likelihood of confusion, and lays down that the concept of similarity must be interpreted in relation to the likelihood of confusion. The text of the 7 th recital is as follows: Whereas the protection afforded by a Community trade mark, the function of which is in particular to guarantee the trade mark as an indication of origin, is absolute in the case of identity between the mark and the sign and the goods or services; whereas the protection applies also in cases of similarity between the mark and the sign and the goods or services; whereas an interpretation should be given of the concept of similarity in relation to the likelihood of confusion; whereas the likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified, constitutes the specific condition for such protection (emphasis added). Opposition Guidelines Part 2 Chapter 2A - Status: March 2004 Page 160

161 Identity and likelihood of confusion: General remarks II. THE INTERPRETATION OF THE STATUTORY FRAMEWORK BY THE COURT OF JUSTICE The Court of Justice has interpreted the concept of likelihood of confusion on a number of occasions in the context of the identical provision of Article 4(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks ( TMD ) (OJ EC 1989 L40, p.1; OJ OHIM 4/95, p. 511). The Opposition Division and the Boards of Appeal consider that these principles are equally valid for the interpretation of Article 8(1)(b) CTMR. The principles set out in the four pertinent decisions are summarised below, decision by decision. These principles must be applied when taking decisions on likelihood of confusion. Where appropriate, OD should expressly refer to those principles that are pertinent in the specific case. 1. Case C-251/95 Sabèl BV v Puma AG, Rudolf Dassler Sport [1997] OJ OHIM 1/98 - The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case (paragraph 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 the degree of similarity between the signs and the goods (paragraph 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 (paragraph 23). - The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (paragraph 23). - The more distinctive the earlier mark, the greater will be the likelihood of confusion (paragraph 24). - It is not impossible that the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public (paragraph 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 (paragraph 25). - The concept of likelihood of association is not an alternative to likelihood of confusion, but serves to define its scope (paragraph 18). Opposition Guidelines Part 2 Chapter 2A - Status: March 2004 Page 161

162 Identity and likelihood of confusion: General remarks - Mere association that the public might make between the 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 (paragraph 26). 2. Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1998] OJ OHIM 12/98 - 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 (paragraph 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) (paragraphs 29, 30). - In assessing the similarity of the goods and services, all relevant factors relating to those goods or services themselves should be taken into account (paragraph 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 (paragraph 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 (paragraph 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 (paragraph 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 (paragraph 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 (paragraph 24). - There may be such likelihood, even if the public thinks that these goods have different places of production (paragraph 30). 3. Case C-342/97 Lloyd Schuhfabrik Meyer v Klijsen Handel BV [1999], OJ OHIM 12/99 - The level of attention of the average consumer, who is deemed to be reasonably well informed and reasonably observant and Opposition Guidelines Part 2 Chapter 2A - Status: March 2004 Page 162

163 Identity and likelihood of confusion: General remarks circumspect, varies according to the category of the goods and services in question (paragraph 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 but must place his trust in the imperfect picture of them that he has kept in his mind (paragraph 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 (paragraph 27). - It is possible that mere aural similarity could lead to likelihood of confusion (paragraph 28). - In determining the distinctive character of a mark and accordingly, in assessing whether it is highly distinctive, it is necessary to make an overall assessment 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 (paragraph 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 it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods and services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (paragraph 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 (paragraph 24). 4. Case C-425/98 Marca Mode CV v Adidas AG and Adidas Benelux BV [2000], OJ OHIM 9/00 Summary: Even where an identity of goods, a high reputation and a possibility of association are given, confusion cannot be presumed. There must always be a positive finding of likelihood of confusion. A likelihood of association in the strict sense in no way implies a presumption of likelihood of confusion. - The reputation of a mark does not give grounds for presuming the existence of a likelihood of confusion in the strict sense (paragraph 41) - Article 5(1)(b) of the Directive cannot be interpreted as meaning that where Opposition Guidelines Part 2 Chapter 2A - Status: March 2004 Page 163

164 Identity and likelihood of confusion: General remarks a trade mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public, and a third party, without the consent of the proprietor of the mark, uses, in the course of trade in goods or services which are identical with, or similar to, those for which the trade mark is registered, a sign which so closely corresponds to the mark as to give the possibility of its being associated with that mark, the exclusive right enjoyed by the proprietor entitles him to prevent the use of the sign by that third party if the distinctive character of the mark is such that the possibility of such association giving rise to confusion cannot be ruled out (emphasis added) (paragraph 42). Opposition Guidelines Part 2 Chapter 2A - Status: March 2004 Page 164

165 Identity and likelihood of confusion: General remarks III. THE COURT S DEVELOPMENT OF A DEFINITION OF LIKELIHOOD OF CONFUSION 1. The essential function of a Community trade mark: the guarantee of the identity of origin According to the seventh recital to the CTMR (see above, under 1.), the function of a Community trade mark is in particular to guarantee the trade mark as an indication of origin. The Court considers this function as the essential function of a trade mark. 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 which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish, it must offer a guarantee that all the goods or services bearing it have originated under the control of a single undertaking which is responsible for their quality (see, in particular, Case C-10/89 HAG GF (HAG II) [1990] ECR I-3711, paragraphs 14 and 13) (Canon, paragraph 28; see also Case C-299/99, Koninklijke Philips Electronics NV v Remington Consumer Products Ltd [2002], ECR 2002, paragraph 30). For the Court, the essential function of the trade mark is also clear from the wording and the structure of the various provisions of the TMD concerning the grounds for refusal of registration that are essentially replicated in the CTM Regulation. One of these provisions, Article 4 CTMR, mandates that a trade mark must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. See Philips v Remington, par. 31 et seq. The portion of these Guidelines dealing with likelihood of confusion focuses on the origin function. Other trade mark functions include goodwill/promotion (advertising) and quality/guarantee. 2. Definition of likelihood of confusion 2.1. The public s attribution of the same origin to the goods or services For the Court it follows from the essential function of a Community trade mark to serve as an indicator of origin that likelihood of confusion must be defined by reference to the risk that the public may attribute the same origin to the goods or services: Opposition Guidelines Part 2 Chapter 2A - Status: March 2004 Page 165

166 Identity and likelihood of confusion: General remarks... 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 and services come from the same undertaking or, as the case may be, from economically-linked undertakings (Canon paragraphs 29, 30). In these Guidelines, and in line with the case-law of the Court of Justice, the terms likelihood of confusion, risk of confusion, danger of confusion will be used as synonyms even though, from a purely semantic standpoint, they are not exactly the same. All these terms should be understood in the sense of a probability of confusion. It is not sufficient that confusion is merely possible, i.e. cannot be excluded. (Cf. Marca Mode, above, under II.4.) 2.2. The origin: economically-linked undertakings Even if the public is of the opinion that the goods or services do not come from the same entity strictly speaking, but only from economically linked undertakings, there will still be a risk of confusion. What matters is the likelihood 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 yet interpreted the term economically linked undertakings in the context of likelihood of confusion. The Court explained the term economically linked undertakings in a different context, namely with respect to the free movement of goods and services in the single market. In Ideal Standard, i.e. Case C-9/93, IHT Internationale Heiztechnik GmbH and Uwe Danzinger v Ideal Standard GmbH and Wabco Standard [1994], OJ OHIM 4/97, p. 314, 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 (paragraph 34). In all the cases mentioned, control [is] in the hands of a single body: the group of companies in the case of products put into circulation by a subsidiary; the manufacturer in the case of products marketed by the distributor; the licensor in the case of products marketed by a 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 which 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 (paragraph 37). Opposition Guidelines Part 2 Chapter 2A - Status: March 2004 Page 166

167 Identity and likelihood of confusion: General remarks In line with these statements, economic links will be assumed where the public assumes that the respective goods or service are marketed under the control of the trade mark proprietor. That control can be assumed to exist in the case of enterprises belonging to the same group of companies ( concern ), in the case of licensing, merchandising or distribution arrangements as well as in any other situation where the public assumes that the use of the mark is normally possible only with the agreement of the trade mark proprietor. 3. Global assessment of likelihood of confusion required 3.1. Weight of relevant factors may vary According to the decision in Sabèl likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the particular case. Each case has to be decided on its own merits and a global assessment of all relevant factors has to be made, including all the factors pertinent to the particular case. The assessment of the likelihood-of-confusion factors, such as the similarity of goods/services and signs, or the impact of the distinctiveness of the earlier mark will be discussed under the respective headings below. However, it must be stressed that the various factors relevant for any given case do not have a fixed, standard value. Rather, the value of these factors may vary depending on the case. What matters is the degree of the similarity of the goods/services and the signs, the degree of distinctiveness of the earlier mark and the impact of any other relevant factor. The final result depends on a balance of the degree (value) of each relevant factor. The present Guidelines list a number of principles that have been derived from practice, in particular from the cases decided by the Opposition Division and the Boards of Appeal. While these principles must be applied in general, it may happen that exceptions to these principles may apply depending on the specific case. If such exceptions should be invoked and applied, the case must be brought to the attention of Group leaders before any decision is taken Relevant factors are interdependent The Court held that a global assessment of the likelihood of confusion implies some interdependence between the relevant factors... Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Canon, par. 17). The more distinctive the earlier mark, the more likely it is that the public might be confused (Sabèl, par. 24). The practical consequences are: Opposition Guidelines Part 2 Chapter 2A - Status: March 2004 Page 167

168 Identity and likelihood of confusion: General remarks The mere fact that similarity of both goods/services and signs is found does not automatically lead to a likelihood of confusion. It is therefore of little avail to state in a decision that the goods/services are similar and that the signs are similar. What the examiner must spell out, rather, is the degree of the respective similarity. Likelihood of confusion may be found where there is a low degree of similarity of the goods/services (signs) in question but where the degree of similarity of the signs (goods/services) is high and/or where the earlier mark enjoys a high degree of distinctiveness. Conversely, likelihood of confusion might not be found where there is a low degree of similarity of the goods/services (signs) even if the signs (goods/services) are identical and/or where the earlier mark is of an average or low degree of distinctiveness. Example: R 18/ Nicole / Nicole (EN): The degree of similarity between dentifrices and certain perfume deodorants is low. Therefore, despite the identity of signs, no likelihood of confusion was found in this regard. Further examples: R 924/ (EN) ECOLEX / COLEX (fig.), R 1022/ (DE) CHIO PITTA / CHIPITA (fig.), R 201/ CARRIBEAN TWIST / CARRIBEAN CLUB. Likelihood of confusion may or may not be found where the earlier mark enjoys a high degree of distinctiveness depending on both the degree of similarity of the goods/services and the signs. 4. Assessment of likelihood of confusion: Overview of the criteria Likelihood of confusion depends in particular on the criteria set out below. They will be explained in greater detail below in the sections concerning similarity of goods/services and similarity of signs as well as in the part global assessment interdependence at the end of the chapter on likelihood of confusion. Degree of similarity of the goods and services in question; where the applicant has requested the opponent to furnish proof of use, those goods and services have to be compared for which the opponent has established use; Degree of similarity of the signs; Degree of distinctiveness (inherent or acquired), strength or reputation of the earlier mark; Opposition Guidelines Part 2 Chapter 2A - Status: March 2004 Page 168

169 Identity and likelihood of confusion: General remarks The degree of sophistication and attention of the relevant public, i.e. of the actual or potential customers of the category of goods or services in question; Coexistence of the conflicting marks on the market in the same territory; Incidences of actual confusion; Prior decisions by Community or national authorities involving conflicts between the same (or similar) marks. The question as to whether or not there is a likelihood of confusion has to be determined in the light of the preceding factors and of any other factors that may be relevant in the specific case. Only where both the goods and services and the signs in question are identical will the assessment go no further. In this case, the absolute protection under Article 8(1)(a) applies, and the CTM application must be rejected for all identical goods and services. See above, under Chapter 1. Given the large number of factors that may be of importance for determining likelihood of confusion, the examiner must never refer to the marks as confusingly similar. Marks may be similar, but likelihood of confusion is something which remains to be determined under the global appreciation. The use of the term confusingly in relation to the marks gives the incorrect impression that the finding of similarity of the signs alone establishes a likelihood of confusion. 5. Likelihood of confusion: questions of fact and questions of law Likelihood of confusion is a legal concept. Its assessment, however, depends both on legal and factual criteria. The question as to which are the relevant factors for determining likelihood of confusion and whether they are met is a question of law. Factors that are relevant in the view of the OD are set out above, under 3.4. They include, for instance, the similarity of goods and services. Furthermore, the question as to which are the relevant criteria (or sub-factors) for determining each of the likelihood-of-confusion factors and whether these criteria are met is also a question of law. The OD has identified the following relevant factors for the similarity of goods and services: Opposition Guidelines Part 2 Chapter 2A - Status: March 2004 Page 169

170 Identity and likelihood of confusion: General remarks - nature, - purpose, - method of use, - complementary character, - competitive character, - channels of distribution, - relevant public, - usual origin of the goods/services. Finally, the question as to which are the criteria defining the likelihood-ofconfusion factors, such as nature, is also a question of law. These criteria are, in particular, composition, functioning principle, physical condition, appearance, and value. On the other hand, it is a question of fact whether or not, and, in the affirmative, to what degree the legal criteria for determining nature are fulfilled. In opposition proceedings the parties must allege and, where necessary, prove the facts relating to the similarity of goods and services. This follows from Art. 74(1) according to which, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. See the following example (replicated below, at B.II (b)(i)): 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 connection with the preparation of dishes for human consumption, whereas the oils and greases are applied in conjunction with machines. Considering nature to be a relevant factor in the similarity analysis is a matter of law. On the other hand, stating that cooking fat is used for dishes and that oils and greases are used for machines is a matter of fact. Example: It follows from Article 74(1) that it is a matter for the opponent to state the facts on which the claim is based. As the applicant has contested those facts, it is also a matter for the opponent to furnish evidence that the facts stated are correct. He has failed to furnish such evidence in support of the alleged use of wear-resistant cast iron as a core material for certain additions to medical implants. It is not a matter for the Office, in inter partes proceedings, to elucidate the question of whether wear-resistant cast iron is actually used for medical implants or additions thereto. Such a use seemed to the Board improbable. On the basis of the facts put to the Board, it can at any rate not be assumed that wear-resistant cast iron is used for implants Opposition Guidelines Part 2 Chapter 2A - Status: March 2004 Page 170

171 Identity and likelihood of confusion: General remarks or additions thereto, and the Board cannot therefore find that any similarity exists between the two sets of goods. R 0684/ TINOX/TINOX (DE) An admission by the applicant of legal concepts, such as likelihood of confusion or similarity of goods and services is irrelevant. It does not relieve the OD from analysing and deciding on these concepts. This is not contrary to Article 74(1) which provides that in inter partes proceedings the Office is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought. This provision is binding on the Office only as regards the facts, evidence and arguments that form the basis of its decision and does not extend to the legal evaluation of the same. Therefore, the parties may agree as to which facts have been proved or not, but may not determine whether or not these facts are sufficient to establish the respective legal concepts, such as similarity of goods and services, similarity of the signs, and likelihood of confusion. Further guidance on the question as to which facts must be alleged and proved if contested, as well as on the burden of proof, is given below in the part relating to the similarity of goods and services (part B IV ) and, in a more general manner, in the guidelines on admissibility and procedure (part C II). Since similarity is a legal concept, in order to avoid confusion between facts and the law, the terms similarities and dissimilarities should not be used in the context of the determination of the facts. The use of sentences such as the goods in dispute show similarities and dissimilarities is therefore discouraged. Instead, it is recommended to use language such as there are certain connections (or links or overlaps) between the goods in dispute. 6. Relevant public 6.1. Analysis of terms Relevant public to be defined According to Article 8(1)(b) it must be determined whether likelihood confusion exists on the part of the public. According to the Court of Justice, this wording shows that the perception of the marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion (see Sabèl, par. 23, Lloyd, par. 25). The relevant public must therefore be defined in every opposition decision Public vs. consumers ; pre-sale and post-sale confusion Likelihood of confusion on the part of the public includes all the instances where the public may come into contact with the earlier and the later mark or Opposition Guidelines Part 2 Chapter 2A - Status: March 2004 Page 171

172 Identity and likelihood of confusion: General remarks with both. This also follows from the fact that infringement actions are available against use of a sign in advertising. Thus, consideration must be given to pre-sale confusion, e.g. confusion arising in the course of advertising of goods or services; to confusion at the time or in the context of purchasing the goods or services, such as when making purchases in a supermarket, by telephone, by mail-order, or through the Internet; to post-sale confusion, i.e. to confusion arising after the goods or services have been purchased; this is relevant for example when packaged goods are purchased and the confusion arises only when the goods are unpacked; or where the goods or services are purchased by discriminating purchasers but are actually used by a broader category of users (members of the family, ) The terms customer and consumer In the cases concerning likelihood of confusion, the Court has so far mainly equated the relevant public with the average consumer 1. The term consumer should be taken to include the ultimate consumer, who may be consuming the goods or services in his private activity, or who may be a professional ultimate consumer. However, there are also goods/services that are bought by persons in the production or distribution (i.e. wholesalers or retailers) chain, which are usually not referred to as consumers. The broader term average customers appears to be better suited to include those in the production and distribution chain. The average customer may be - the average private ultimate consumer customer, or - the average business customer, both on an intermediate level in the production (e.g. processing of raw materials) or distribution (e.g. wholesale) chain and as a final customer, or - both of them (e.g. normal paint is sold both to painters and to private persons for do-it-yourself purposes). 1 In the context of Article 8(5), the Court of Justice distinguishes only in very general terms between the public at large and a more specialised public, depending on the product or service (Chevy, paragraph 24). Opposition Guidelines Part 2 Chapter 2A - Status: March 2004 Page 172

173 Identity and likelihood of confusion: General remarks As for the importance of the degree of sophistication and attention of the average customer in the likelihood-of-confusion analysis, see below, under section IV.5. The distinction between consumers and business customers is generally in line with the Joint Recommendation on well-known marks, which distinguishes between consumers and business circles. Article 2(2) of the Joint Recommendation reads as follows: [Relevant Sector of the Public] (a) Relevant sectors of the public shall include, but shall not necessarily be limited to: (i) actual and/or potential consumers 2 of the type of goods and/or services to which the mark applies; (ii) persons involved in channels of distribution of the type of goods and/or services to which the mark applies [refers to consumers as well; see note 2.13]; (iii) business circles [importers, wholesalers, licensees, franchisees; see note 2.14] dealing with the type of goods and/or services to which the mark applies. Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization (WIPO) at the Thirty-Fourth Series of Meetings of the Assemblies of the Member States of WIPO September 20 to 29, 1999 The consumer customers, who will often simply be referred to hereinafter as consumers, may be - the public at large, as in the case of mass consumption goods, e.g. foodstuffs for human consumption, or - only a section of the public at large, who are interested in purchasing certain specific goods or services, e.g. in the case of tobacco. 23/1998 SODEXHO (cl.35, 37, 42) / SODECO (cl.35, 37, 42) (FR), 532/1999 PROTECTOR (cl.3) / LIPROTECTOR (cl.3) (EN), 20/1998 HUMICA (cl.1) / HUMIC (cl.1) (EN). The average customers of the category of goods or services in question constitute the relevant public. As stated, in assessing likelihood of confusion it is the perception of the marks in the mind of the relevant public that matters. The term customers always refers to the actual and the potential customers, that is, the customers that currently are or in the future may be purchasing the 2 Note 2.12 on item (i) states: The expression consumers is to be understood in the wide sense of the term, and should not be restricted to those persons who actually and physically consume the product. In that respect, reference can be made to the term consumer protection which covers all parts of the consuming public. Because the nature of the goods or services to which a mark is applied can vary considerably, actual and/or potential consumers can be different in each case. Groups of actual and/or potential consumers may be identified with the help of parameters such as the target group for the goods and services in relation to which the mark is used or the group of actual purchasers. Opposition Guidelines Part 2 Chapter 2A - Status: March 2004 Page 173

174 Identity and likelihood of confusion: General remarks goods/services. The potential customers include those customers who, in the usual course of events, are likely to buy the goods/services (e.g. a family member buys a good or service he/she does not need for another family member) Use of term end users The term end users should be used with caution, if at all, since it is imprecise. It will always cover consumers. In addition, it may also be considered as comprising business customers in the production chain that will further process a product. However, it will not apply to business customers in the distribution chain, i.e. wholesalers and retailers. It is true that the term end users is mentioned in the English version of the Canon judgment: In assessing the similarity of the goods or services concerned all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their end users and their method of use and whether they are in competition with each other or are complementary (Canon, par. 23). However, the term end users is an incorrect translation of Verwendungszweck (other translations include destination (FR), destino (ES), destinazione (IT); the language of the case was German and only this original language is official). The correct Canon statement would read as follows: Those factors include, inter alia, their nature, their purpose of use (instead of end users ) and their method of use, and whether they are in competition with each other or are complementary (par. 23). Even though much time elapsed since the Canon judgment was rendered (the date of the decision was 29 September 1998) and even though the flawed translation has been widely used (users include the Boards of Appeal and the Court of First Instance), the OD will in the future use the correct term in the similarity of goods analysis Relevant public: Meaning for the likelihood-of-confusion analysis It is the practice of the Opposition Division to take the perception of the marks in the mind of the average customer of the type of goods or services in question into account in the final likelihood-of-confusion analysis only. The same goes for the perception of the goods/services. The question is discussed in greater detail in the global assessment part of the guidelines (below, part IV). However, the relevant public plays a role in the similarity-of-goods/services analysis as well. This criterion is of relevance, in particular, where there is no, or hardly any, overlap in the relevant public. Such a finding weighs heavily against similarity of goods and services. See below, under B II Opposition Guidelines Part 2 Chapter 2A - Status: March 2004 Page 174

175 Identity and likelihood of confusion: General remarks 6.3. Likelihood of confusion for a significant part of the relevant public is sufficient If a significant part of the relevant public may be confused as to the origin of the goods, this is sufficient to establish a likelihood of confusion. It is not necessary to establish that all actual or potential customers are likely to be confused. There may be several distinct groups of customers for one and the same good or service that all have a substantial size, i.e. several relevant publics. In such a case, each of these distinct publics may have characteristics of their own. Likelihood of confusion may then differ, depending on the respective group. If the examiner finds likelihood of confusion with respect to one group of a substantial size only, this will be a sufficient basis for accepting likelihood of confusion. 7. Similarity of signs In the similarity-of-signs analysis the resemblances of the signs are analysed on an objective basis. For instance, as regards the conceptual comparison, ELISA is an abbreviation for enzyme linked immunoassay solvent assay (a sensitive diagnostic test for a past or current exposure to an infectious agent such as the AIDS virus). The impact of the sophistication and attention of the relevant public on the perception of the signs is dealt with in the final likelihood-of-confusion analysis. In the example given, it will be taken into account in that final analysis that the highly qualified customers of the goods in question will recognise the meaning of ELISA. See RELISA / VARELISA (EN) and below, under D I Similarity of goods/services The similarity of the goods and services in question is assessed from a commercial perspective. The examiner must consider the marketplace realities that characterise the relationship of the goods and services under comparison. These marketplace realities will again often also play an important role in the global assessment of likelihood of confusion. For instance, the features of the goods may have an impact on the degree of attention of the customer: in the cases of expensive purchases (such as cars), the degree of attention is usually higher than where the buying behaviour is casual (e.g. sweets). See part B IV 5.3. Furthermore, the way in which a specific category of goods or services is marketed may increase the importance of one of the different aspects of similarity of signs (visual, phonetic or conceptual). See part B IV 4. Opposition Guidelines Part 2 Chapter 2A - Status: March 2004 Page 175

176 Identity and likelihood of confusion: General remarks 9. The relevant point in time The relevant moment for assessing likelihood of confusion is the time when the decision is taken. Where the opponent relies on enhanced scope of protection (strength) of the earlier mark, the conditions for such an enhanced scope must have been met by the filing date of the CTM application (or any priority date) and they still have to be fulfilled at the time of the decision. In the practice of the Opposition Division, it is assumed that this is the case, unless there are indications to the contrary. Where the CTM applicant relies on a reduced scope of protection (weakness), only the date of the decision is of relevance. In practice, such an occurrence will be rather exceptional since it presupposes a dramatic change of market conditions over a relatively short period of time. An example may be the telecommunications industry where, from Spring 2000, the market presence of many marks previously broadly used in the new economy has changed significantly. Cf. the part of the Guidelines on Article 8(5), under section III Opposition Guidelines Part 2 Chapter 2A - Status: March 2004 Page 176

177 Identity and likelihood of confusion: General remarks IV. TYPES OF LIKELIHOOD OF CONFUSION 1. Confusion between the marks themselves (direct confusion) Confusion will generally be inevitable where the differences between the marks and the goods are so small that there is a risk that the public will either not notice them or forget or disregard them and thus confuse the marks directly by mistaking one for the other. 2. No confusion between the marks themselves but confusion as to origin (indirect confusion) The Court stressed in Sabèl that the concept of likelihood of association is not an alternative to that of likelihood of confusion, but serves to define its scope. In Adidas the Court added that the likelihood of confusion can never be assumed from a mere likelihood of association, even in cases involving earlier reputed marks. Hence, if perception of the one mark merely brings to mind the memory of the other, but the public remains aware of their differences and is not of the opinion that the goods/services in connection with which the mark is used may have the same origin (understood in the broad sense as including economically linked undertakings), there can be no likelihood of confusion. As stated above, the mere association that the public might make between two marks in view of certain common features is not enough for the purposes of Article 8(1)(b). However, in many cases the overlaps between the marks may be sufficient to suggest a common origin even where one mark is not mistaken for the other. Example: 113/1998 SUNRISE / SUNSET (EN) Accordingly, there may also be a likelihood of confusion where the relevant public is able to distinguish between the marks themselves, but still may believe that the goods originate from the same undertaking or economicallylinked undertakings. One such instance is the case of a family of trade marks. House marks or product-line identifiers are often combined with other secondary elements in a family of marks showing common origin. Such a systematic use of a basic component by the owner himself in various combinations of signs and in different contexts might lead the public to disregard any secondary differences in the case of third marks built around the same core element, as it will believe that they merely indicate a new product in a product-line from the same business entity (see point D. I below). Opposition Guidelines Part 2 Chapter 2A - Status: March 2004 Page 177

178 Identity and likelihood of confusion: General remarks V. THE STRUCTURE OF OPPOSITION DECISIONS 1. Goods/services clearly dissimilar The examination usually opens with the comparison of goods and services. If the goods and services are not clearly dissimilar and, thus, any likelihood of confusion cannot be clearly excluded at this stage, the signs are also compared. Otherwise the examination is concluded. 353/1999 POLAR / POLAR (EN), 904/1999 BOULEVARD / BOULEVARD PEDRALBES (EN). The examination may be closed due to a dissimilarity of the compared goods/services only if the same conclusion would have been reached in the theoretical case where the other relevant factors of likelihood of confusion were fulfilled to a maximum extent, in particular where the signs were identical and the earlier mark was highly distinctive. This has to be expressly mentioned in the decision. The following standard paragraph is proposed for this purpose: Example: In the light of the above considerations, this finding of dissimilarity of the relevant goods/services would not be different even if the other relevant factors of likelihood of confusion were fulfilled to a maximum extent, in particular if the signs were identical and the earlier mark was highly distinctive. According to Article 8(1)(b) CTMR, the similarity of the goods/services is a condition for a finding of likelihood of confusion. Since the goods/services are clearly dissimilar, there can be no likelihood of confusion. Consequently, it is not necessary to proceed further with the examination, in particular with a comparison of the signs. Beer was held to be sufficiently dissimilar to electronics, as were art exhibitions to clothing, for the examination to be concluded without any comparison of signs. 353/1999 POLAR (cl.32) / POLAR (cl.9) (EN) Other examples: 904/1999 BOULEVARD (cl.25) / Bvd. PEDRALBES (cl.41) (EN), 1531/2001 Lloyd s (cl. 18, 25) / Euro Lloyds (cl. 36), 2618/2001 Diane (cl. 5) / Diana (cl. 3, 5). Conversely, if the connections between the goods and services found suggest that the public may think that they come from the same or economically-linked undertakings, the examination continues and a conclusion must be drawn as to the degree of similarity between the goods Blû (cl 33) / BLU (cl 32) (EN). Opposition Guidelines Part 2 Chapter 2A - Status: March 2004 Page 178

179 Identity and likelihood of confusion: General remarks For determining the degree of similarity of goods/services, the pertinent factors in each case are examined (see the following part II). Example regarding degree: For the Board of Appeal, instead of being similar, games and playthings are similar to a high degree. R 0626/ (EN) IMC (fig) / IMC (fig). In a second step, the degree of similarity of the signs is assessed. This is done by applying the criteria set out below in part III. In a third phase, a global assessment of all relevant factors is made, the degree of similarity found between the marks and the goods and services, the degree of distinctiveness of the earlier mark, the degree of sophistication and attention of the average customer of the goods/services in question, and any other relevant factor. The assessment of all relevant factors aims to establish if there is a likelihood of confusion. 2. Signs clearly dissimilar The above scheme is reversed for practical reasons where the differences between the signs are so clear that confusion would clearly not occur, even if the other relevant factors of likelihood of confusion were fulfilled to a maximum extent, in particular if the goods and services were identical and the earlier mark was highly distinctive. In such cases, the examination starts with the comparison of signs and is immediately concluded after demonstrating that they are clearly dissimilar. 374/1999 DANN BEER / DÜKS (EN), 459/1999 SOFT-IN AD. KRAUTH / SOFTPEN (DE), 1628/1999 ORAL / DR.BEST (DE). The following standard paragraph is proposed for this case: In the light of the above considerations, this finding of dissimilarity of the relevant signs would not be different even if the other relevant factors of likelihood of confusion were fulfilled to a maximum extent, in particular if the goods/services were identical and the earlier mark was highly distinctive. According to Article 8(1)(b) CTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are clearly dissimilar, there can be no likelihood of confusion. Consequently, it is not necessary to proceed further with the examination, in particular with a comparison of the goods/services. In analogy to the preceding section V.1., if a likelihood of confusion cannot be excluded due to a dissimilarity of the signs, the degree of similarity of signs is assessed. In a second step, the degree of similarity of the goods/services is determined. This is followed by the third phase, i.e. the global assessment. Opposition Guidelines Part 2 Chapter 2A - Status: March 2004 Page 179

180 Identity and likelihood of confusion: Similarity of goods and services CHAPTER 2: LIKELIHOOD OF CONFUSION B. SIMILARITY OF GOODS AND SERVICES I. INTRODUCTION In the absence of identity of the conflicting goods and services, their similarity is a necessary condition for a finding of likelihood of confusion under Article 8(1)(b) CTMR. The similarity of the goods and services covered by the conflicting signs has been addressed in the case-law of the Court. In Canon the Court stated that the similarity of goods and services is a necessary condition for the application of Article 8(1)(b): even where a mark is identical to another with a highly distinctive character, it is still necessary to adduce evidence of similarity between the goods or services covered the likelihood of confusion presupposes that the goods or services covered are identical or similar (Canon, paragraph 22). As already said above, in section A I 2.1., goods and services are products, and therefore the term products should also be used to refer to both goods and services.. This is in line with the trade custom that not only refers to goods as products but also to services. A finance product, for instance, falls under the category services. In many decisions taken by the OD in the past the term products is used in a narrower sense, namely as a synonym for goods only. Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 180

181 Identity and likelihood of confusion: Similarity of goods and services II. THE SPECIFICATION OF GOODS AND SERVICES 1. In general The chapters above in the identity section that lay the general groundwork for the assessment of goods and services (see above, part A I 2) are also relevant in the context of similarity of goods and services. Concerning the use of broad categories in specifications, in particular, it should be remembered that where a number of goods or services specifically designated by the earlier mark are covered by a generic term used in the CTM application, the recommended practice is to consider the respective goods identical because the specific good (X) is included in the general category (X+). Since the Office cannot ex officio split the general category (X+), the applicant restrict the application by eliminating the specific category from the specification in order to avoid a finding of identity. (See section A.I.2.5. above.) Furthermore, this applies even if there is similarity between one very specific good/service of the earlier mark and a general category of the CTM application. The application will have to be rejected for that general category if the applicant does not properly restrict his specification. There is no core theory in the sense that both specifications would have to cover about the same amount of goods/services in economic terms. Example: Advisory services relating to the installation, maintenance and repair of machines are similar to one very specific machine, namely, a laser cutter: 1390/2001 (focus (fig.) / FOCUS (cl. 7, 37) (FR) 2. The Nice Classification 2.1. Listing of products in the same class not conclusive of similarity The fact that the respective products are listed in the same class of the Nice Classification is not, by itself, an indication of similarity. According to Rule 2(4) IR, 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. Thus, the argument in one case that scientific instruments are similar to switches, sensors and controllers because they are all in class 9 was not considered valid. 371/1999 TAMRON (cl.9) / AMRON (cl.9) (EN). Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 181

182 Identity and likelihood of confusion: Similarity of goods and services 2.2. The Nice Classification as a tool for interpretation of the specification Notwithstanding Rule 2(4) IR, it is important to note that, to some extent, the classification of goods and services follows the same principles as the analysis of similarity of goods/services. In such cases, goods or services in the same class may indeed be similar. The International Classification consists of the 45 classes of goods and services indicated by general indications ( class headings ), complemented by general remarks and explanatory notes, as well as the Alphabetical List of goods and services contained some. entries with the indication of the class to which they belong. The International Classification is binding upon the Office (Rule 2 CTMIR). Consultation of the remarks and notes will often help in finding the proper result. Thus, in cases where the wording of the specification is either broad or not sufficiently clear, reference to the Nice Classification may be useful for clarifying the kind of goods at issue, or for revealing additional features that may be pertinent for the comparison. For example, products for preserving food in class 1 may only be of a chemical nature. Aperitifs in class 33 will necessarily be alcoholic and, hence, not identical with the goods aperitifs, non-alcoholic. 546/1999 SYS(cl.1) / SYSTOL (cl.1) (EN), 1003/1999 MOROS (cl.7, 12) / MORO (cl.7, 8, 12, 37) (ES). Alcoholic and non-alcoholic beverages containing malt in class 32 include beer-type drinks in class 32 but not whisky-type drinks because whisky is included in class /2002 Bit / American Bud (fig) (DE) The applicant s floor coverings; vehicle carpets and mats; door mats are not similar to the opponent s automobiles and parts thereof. According to the Nice Classification, the expression automobiles and parts thereof means automobiles and the structural and essential parts of them. This is not the case of floor coverings; vehicle carpets and mats; door mats. These goods are not essential parts or components of cars. R 969/ S-TYPE / S-CLASS (EN) Furthermore, reference to the class number may serve for clarifying the kind of goods at issue. Example: Wires, pins, needles and fastenings in class 17 were held to be dissimilar to pins and needles; zippers in class 26. Class 17 of the Nice Classification relates to goods used in the construction business. Class 26 of the Nice Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 182

183 Identity and likelihood of confusion: Similarity of goods and services Classification relates, on the other hand, to small articles for sewing (haberdashery). Thus the goods are of a completely different nature and the goods in question are neither in competition with each other nor interchangeable ALFA / ALPHA (EN) Jessie N. Marshall writes in her treatise Guide to the Nice Agreement concerning the international classification of goods and services (published in 2000, see p. 25): As far as the class headings are concerned, their structure is not uniform. Some headings may encompass others and cover all the goods of the class. All the goods included in class 5, for instance, flow from the first phrase pharmaceutical, veterinary and sanitary preparations. Furthermore, the line between some class headings may blur. This is the case, for instance, with the paper goods (paper, cardboard and goods made from these materials, not included in other classes) and printed matter in class 16. See Marshall, p. 89. In this context it is also appropriate to note that the classes of the Nice Classification are structured according to factors that may indeed be relevant for the similarity analysis. This is illustrated by the following examples quoted from Marshall s textbook. Class 1: function [i.e. one facet of nature ] goods are properly included in Class 1 if their functions are based on their chemical properties rather than any specific application to which the goods may be put. (pp. 1 et seq.) Class 3: purpose of the use All items relating to cosmetics, personal hygiene (when not for medical purposes) and general cleaning or polishing are classified in Class There are many items that can be classified in Class 3 and another class depending on whether the use of the item is for cosmetic or toiletry purposes as opposed to some other very specific purpose. (p. 14) Class 18: nature, purpose of the use Most items that are made of leather are classified in Class 18 unless they serve a purpose that is more suitably classified in another class. (p. 101) Classes 20 and 21: Miscellaneous goods no indication of similarity These classes are often confused with each other since both are sometimes referred to as the catch-all or miscellaneous goods classes. each class only includes miscellaneous goods of specified material compositions. (p.108) Class 32: competitive goods the classification of beer in this class is based on its characterisation as a soft drink alternative. (p. 159) Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 183

184 Identity and likelihood of confusion: Similarity of goods and services III. THE RELEVANT TERRITORY The territory where the earlier mark has been registered will also determine the geographical extent of the comparison. This is important to the degree that national consumer habits or trade customs may have an impact on the way that goods are manufactured, distributed or consumed (method of use) in the relevant territory. R 0208/ BOWMAN S / BOWMORE (EN), R 0331/ (fig) / (fig) (EN), R 0536/ & 674/ NEGRA MODELO / MODELO (EN). According to OD practice, differences between national markets should be taken into account in the comparison of goods and services. They may lead to differing outcomes as to the similarity of certain goods in different territories. This approach does not run counter to the notion of one single European consumer. According to the Court of Justice the average consumer is deemed to be reasonably well informed and reasonably observant and circumspect (Lloyd, paragraph 26), irrespective of nationality or residence. Taking into account national consumption habits, such as those relating to beverages (e.g. the habit of mixing water and wine in Germany), does not impinge on the reasonably well informed and reasonably observant and circumspect standard. If the consumption habits were not taken into account by the Office in a case where the earlier right is a national trade mark, the Office could not properly assess likelihood of confusion in the Member State concerned. By basing its decision on an artificial consumption practice, there would be a risk that the Office would decide differently from authorities in the Member States (trade mark offices and/or courts) that will take into account the national consumption habits. Such a practice would contravene the goal of having non-contradictory decisions concerning one and the same territory, no matter whether national or Community authorities take them. National habits may also have an impact on the consumer s perception of the goods and services and thus affect his attention, an issue usually dealt with in the overall assessment of likelihood of confusion. Example: In Blû (cl. 33) / BLU (cl. 32) (EN) it was held that consumers would mix alcoholic and non-alcoholic drinks, especially in the German market where mixed beverages are very popular. The distribution channels of the two products, i.e. alcoholic beverages (except beers) and mineral and aerated waters and other nonalcoholic drinks; fruit drinks and fruit juices, were also considered to be similar in Germany. Both categories of products can be found in supermarkets and grocers shops close to each other on the same shelves in these outlets. Furthermore, in Germany, it would be likely for producers of alcoholic beverages (except beers) to also produce the goods covered by the other mark in suit. Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 184

185 Identity and likelihood of confusion: Similarity of goods and services But see R 36/ Lindenhof/LINDERHOF (fig) (DE) where the Board found only a remote similarity between sparkling wine ( Sekt ) and, in particular, fruit juices and mineral waters in the relevant German territory. This remote similarity was held to be insufficient for a likelihood of confusion despite the marks being very similar aurally. Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 185

186 Identity and likelihood of confusion: Similarity of goods and services IV. SIMILARITY OF GOODS AND SERVICES: A MATTER OF DEGREE 1. Introduction Restating part of the 7 th recital to the CTMR, the Court said: The appreciation of the likelihood of confusion depends on numerous elements and, in particular, on the degree of similarity between the signs and the goods or services... (Sabèl, paragraph 22) It follows from this statement that the degree of the similarity between the goods and services has to be assessed in each case. Together with the degree of similarity of the signs, the degree of distinctiveness of the earlier mark (see Sabèl, paragraph 24), the level of sophistication and attention of the average consumer of the goods or services in question (see Lloyd, paragraph 26), and any other factor relevant to the case, the degree of similarity of the goods and services constitutes the basis for determining whether confusion is likely to occur. The 7 th recital to the CTMR also indicates how similarity of goods and services should be interpreted: An interpretation should be given of the concept of similarity in relation to the likelihood of confusion. And the Court has defined likelihood of confusion as... 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 there can be no such likelihood [of confusion] 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 economicallylinked undertakings. (Canon paragraphs 29 & 30) The importance of common origin (in the broad sense) for the scope of confusion reveals the kind of similarity required as regards the goods and/or services (products) in comparison: The connections between the goods/services must be capable of suggesting that they come from the same or economically linked undertakings. See CFI in case T-99/01 MYSTERY (fig) / Mixery, para. 41 and CFI in case T-110/01 HUBERT (fig) / SAINT-HUBERT 41, para. 46 (case pending before the Court of Justice). 2. Assessment of the degree of similarity of the goods and services Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 186

187 Identity and likelihood of confusion: Similarity of goods and services 2.1. Express and consistent answers required A finding of likelihood of confusion requires an express answer in the decision to the question of similarity of the goods/services concerned. This follows from both Article 8(1)(b) and Article 8(5). If the goods/services are found to be similar, the respective answer must also indicate the degree of similarity. The answer as to whether or not the goods/services are similar (and, if so, to what degree) is generally given in the similarity of goods/services part of the decision. In borderline cases, the answer need not be given in that part but may be given in the final part conclusion only (see below, under d.). Furthermore, the assessment regarding similarity of goods/services must be consistent. This means that no divergent results must be reached in different decisions as regards the same compared goods/services How to make the assessment of similarity of goods and services In general 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. The examiner may know the customs from the facts and evidence submitted by the parties. Furthermore, there may be relevant facts that are notorious and therefore do not need proof. What does not follow from evidence or is not notorious cannot be taken into account (cf. Article 74(1)). On the distinction between questions of law and questions of fact see above, under A III.5. and the guidelines on admissibility and procedure, part C II. It is important that the examiner refrains from any speculation concerning the realities of the marketplace regarding, for example, machines or IT goods or business services. Phrases like: It may well be that certain manufacturers of goods 1 are also engaged in the manufacture of goods 2 or words like perhaps may not be used Similarity of signs and distinctiveness of earlier mark: impact on likelihood of confusion but not on similarity of goods/services The similarity of the goods and services in question must be assessed without taking into account the degree of similarity of the conflicting signs in the concrete case or the distinctiveness of the earlier mark. This follows from the Court s statement in Canon that: even where a mark is identical to another with a highly distinctive character, it is still necessary to adduce evidence of similarity between the goods or services covered the likelihood of confusion Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 187

188 Identity and likelihood of confusion: Similarity of goods and services presupposes that the goods or services covered are identical or similar (paragraph 22). the distinctive character of the earlier trade mark, and in particular its reputation, must be taken into account when determining whether the similarity between the goods or services covered by the two trade marks is sufficient to give rise to the likelihood of confusion (paragraph 24). Any doubts about the proper interpretation of these paragraphs should have been removed by the CFI s statement in HUBERT (paragraph 65) clearly confirming the view that similarity of products does not depend on the distinctiveness of the earlier mark: According to the case-law of the Court of Justice, the likelihood of confusion presupposes that the signs as well as the goods and services covered are identical or similar, and the reputation of a mark is a factor which must be taken into account when determining whether the similarity between the signs or between the goods and services is sufficient to give rise to a likelihood of confusion (see, to that effect, Canon, paragraphs 22 and 24) Absolute outer limit of similarity An absolute borderline must be drawn between goods/services that are similar and those that are dissimilar. This means that one and the same pair of goods and services always are either within or outside that borderline. A definition of the outer limit is required for several reasons: - First, there is a need for legal certainty. - Second, where the products are dissimilar, the earlier mark can be a basis for refusal of the CTM application only under the conditions set out in Art. 8(5). Those conditions confer enhanced protection on marks with reputation. It is often difficult to establish that the conditions, which include an unfair advantage or a detriment to the distinctive character or the repute of the earlier mark, are met. - Third, it is desirable that the assessment of goods and services by the Office and by the relevant authorities of the Member States run in parallel. For Member States trade mark authorities it will become indispensable to define an absolute outer limit in the following two situations, which makes the need for the Office obvious to make such definition as well: Where the Member State does not provide enhanced protection for marks with reputation, Art. 4(4)(a) of the TM Directive leaves it up to the discretion of the Member States to do so. Furthermore, a Member State may choose to provide such enhanced protection only for infringement but not for opposition proceedings. (Germany, e.g., has done so.) Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 188

189 Identity and likelihood of confusion: Similarity of goods and services The definition of the borderline between (remotely) similar and dissimilar products must be based on the following test: The products are similar if, supposing identical marks, the public could believe that they come from the same or economically-linked undertakings. This definition follows from the interpretation of the 7 th recital to the CTMR made above, under section 1. A narrower approach, assuming that the signs are merely similar, would leave gaps in protection. Conversely, a broader approach, assuming in addition to identical signs a maximum degree of distinctiveness of the earlier mark, would blur the borderline with Art. 8(5). Where the earlier mark enjoys a reputation, the public will hold the belief that nearly all products come from the same or, at least, economically-linked undertakings Borderline cases (remote similarity v dissimilarity) In borderline cases, the answer as to whether or not the goods/services are similar (and, if so, to what degree) may be left open in the similarity analysis and may be given in the conclusion part of the decision only. In such cases, the various relevant factors concerning the similarity of goods/services in dispute must be discussed in the similarity part of the decision. The question is whether, from a commercial perspective, there is a link between the goods/services. In the example clothing (cl. 25) v perfumery (cl. 3), it should be identified, for example, that these goods may be sold together and may be manufactured under the responsibility of one single undertaking. It will then be for the likelihood-of-confusion analysis to determine whether the link between these goods is sufficient, in the light of the similarity of the signs, the distinctiveness (intrinsic or acquired through use) of the earlier mark and any other relevant factor, to justify a finding of likelihood of confusion. As a precondition for a finding of likelihood of confusion it must, at this stage, also be expressly stated that the goods and services have been found to be similar, and to what degree. Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 189

190 Identity and likelihood of confusion: Similarity of goods and services V. SIMILARITY OF GOODS: FACTORS CONSIDERED 1. General principles As far as the criteria for establishing similarity of goods/services are concerned in greater detail, the Court held in Canon that:... 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. Those factors include, inter alia, their nature, their and their method of use and whether they are in competition with each other or are complementary (paragraph 23). As stated above (under B.I d), the term end users is an incorrect translation. The correct translation is purpose of use. The term inter alia shows that the enumeration of the above factors by the Court is only indicative. The similarity of goods and services cannot depend on any number of fixed and limited criteria that could be generally determined in advance, with a uniform effect in all cases. There may be other factors in addition to or instead of those mentioned by the Court that may be pertinent for the particular case. Similarity of the goods/services in question must be determined on an objective basis. Objective basis, however, does not mean abstract or intrinsic basis. Rather, it is the commercial perspective that is of paramount importance. The Court held in Canon that in assessing the similarity of goods all the relevant factors relating to those goods themselves should be taken into account. The most important factors are set out below and will be treated in that order in the subsequent text: [Canon factors:] nature (composition, functioning principle, appearance, value et al.) purpose (intended use): same or similar uses method of use complementary goods/services competitive / interchangeable goods/services: satisfaction of the same or a similar demand [additional factors:] channels of distribution: same or similar channels of distribution; in particular placement in the same points of sale the relevant public Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 190

191 Identity and likelihood of confusion: Similarity of goods and services the usual origin of the goods/services: type of undertaking controlling the production of the goods; in particular the place of production and the method of manufacture. In any given case, the examiner must determine the relevant factors and the corresponding features that characterise the relationship between the goods and services compared, and the weight to be attributed to each of these relevant factors. Example: The factors relating to water, in the abstract, have multi-facetted features. Yet, only parts of these features are relevant, depending on the good that water is compared with: Factor nature: ground) purposes of use: methods of use: features transparent, freely available liquid (sea, lakes, rain, thirst quenching, cleaning, cooling (engine) etc. swallowing (drinking), washing machine, sponge etc. For instance, as far as the factor purpose is concerned, the relevant features are as follows: - if water is compared with wine, it is thirst quenching; - if water is compared with chemicals used in a laundry, it is cleaning. The principal aim of the comparison of the goods /services is not to identify the intrinsic or inherent features of the goods or services in question in an abstract manner. What matters, rather, is the overlap of the factors, such as nature, purpose and method of use etc., that characterise the specific pair of goods and services in question. Thus, the factors and features characterising one good or service may be of one kind in one comparison and of another kind in another comparison involving different goods and services. It must be noted that in many cases there will be overlaps between the factors in the sense that where one is fulfilled another one will usually be met as well. This question is discussed at the end of the discussion of each factor and summarised at the end of the similarity-of-goods and services part, under predominant factors. To safeguard consistency and transparency of decisions, examiners are instructed to use the wording of the factors above, i.e. nature, purpose etc., and not equivalent wordings, unless they identify this equivalence clearly. For instance, instead of purpose of use, one could also say destination or (consumers ) needs served. But using these terms could only lead to confusion as to what is meant by the factor. Furthermore, using the same concept in cumulation might suggest the presence of a higher degree of similarity because a greater number of factors would coincide: The purpose, Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 191

192 Identity and likelihood of confusion: Similarity of goods and services destination and needs served are the same. This sentence, however, simply includes a repetition of one and the same concept, and that repetition, obviously, should have no bearing whatsoever on the outcome of the case. 2. The specific similarity factors applied to the comparison between goods and goods 2.1. Introduction: The distinction between factors may be difficult In the following sections an attempt is made at defining and illustrating the various factors for similarity of goods and services. However, it is acknowledged that there are cases in which a distinction between various factors will be difficult to draw. This is particularly true as far as nature, purpose and method of use are concerned. See the table under section 2.5. below. Where the examiner encounters such difficulties, he/she should not make a great effort at distinguishing the factors but rather treat them jointly. In such a situation, he/she could, for instance, state that the goods compared have the same nature and the same purpose indicating the specific facts on which this finding is based. The final remarks on their relative importance at the end of the discussion of each factor, in addition to chapter 8 on the interrelationship of the various factors, should further help in delineating the boundaries between them. The explanation of the various similarity-of-goods-and-services factors starts with their application to goods only. The application of these factors to services will be discussed in section V Nature General considerations (i) The main criteria for defining nature A variety of criteria of the goods/services in question may be useful for determining their nature, in particular: - composition, - functioning principle, - physical condition (e.g. liquid/solid), - appearance (design), - value. These criteria are analysed below, under b. (ii) Nature to be defined from a commercial perspective As with all factors concerning the similarity of goods/services, the nature of one set of goods/services must be defined from a commercial perspective in relation to the other goods/services. It may not be necessary or even useful to Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 192

193 Identity and likelihood of confusion: Similarity of goods and services try to define the nature of a product in an absolute, objective and abstract manner by establishing the intrinsic nature, i.e. the inherent and identifying features, in particular its composition. Since the nature must be determined in respect of the specific goods and services in question, features of the goods/services may be of importance with respect to certain goods/services but not to others. Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 193

194 Identity and likelihood of confusion: Similarity of goods and services Examples: CTMA product Features of the goods Earlier mark product Intrinsic Commercial Ice as edible ice Both: frozen Ice-cream: Ice for cooling ( ice-cream ) water foodstuff; ice for cooling: auxiliary good for preserving foodstuffs Ice as edible ice ( ice-cream ) Frozen water v preparations Both goods are sweet foodstuffs Flour confectionery, made from rolls, biscuits flour et al In the first example edible ice v ice for cooling, there is an overlap in the composition of the goods, i.e. both consist (partly) of frozen water. From a commercial point of view, however, this is obviously irrelevant. What matters is that one is a foodstuff while the other is not. Therefore, their nature is not similar. In the second example as well, the composition is irrelevant. It is the fact that both are sweet foodstuffs and typical desserts that makes their nature similar from a commercial perspective. See BoA 795/ (Allegro / ALLEGRO): "Edible ices" are to be compared with, in particular, "flour confectionery", "rolls" and "biscuits". Although... ice cream products are frozen, they are like confectionery products, sweet foodstuffs [the nature] (iii) Dictionary entries may but do not necessarily provide help If the nature cannot already be deduced easily from the specification, additional information may be derived from dictionary entries. 955/1999 SUPERFLAM (cl.9) / EUROFLAM (cl.9, 11) (FR) However, since it is not the intrinsic nature that matters, the examiner must not merely rely on dictionary entries, as case R 152/ DIPPIN DOTS / dippin dots (fig) (EN), (paragraph 24) suggests: The Board held that the contested decision is inconsistent in the treatment of ice and ices in Class 30 in the application. Whilst it holds that ices are identical to ice creams and edible ices and are similar to frozen yoghurts; novelty frozen water beads; frozen dessert products, it holds that ice is not similar to the opponent s goods because of Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 194

195 Identity and likelihood of confusion: Similarity of goods and services differences in nature and purpose Here, the Board refers to the The New Shorter Oxford Dictionary, 1993 Edition, according to which ice is the singular of ices and means inter alia (An) ice cream or Icing for cakes. It must be concluded therefore that ice in the application is identical to ice creams and edible ices protected by the earlier marks. This quote clearly shows the pitfalls of relying on dictionary entries only. Given the fact that both ices and ice are mentioned in the specification, OD had correctly assumed that ices refers to edible ice, whereas ice was meant for cooling purposes. (Both types of ice are classified in class 30 of the Nice Classification.) Thus, OD had properly concluded that the goods differed in nature and purpose. (iv) To fall under the same broad heading is not sufficient for a finding of similar nature. The fact that the goods/services to be compared fall under the same heading does not mean that their nature is more than remotely similar if the heading is comprehensive. An example of such a broad heading is foodstuffs for human consumption. See 1210/1999 COCOPOPS(cl.30) / COCO (cl.31) (EN), where fresh fruit was compared with, inter alia, coffee, flour, and bread. Case 2339/2001 LA VIE CLAIRE (fig) / La Vie Claire (fig) (EN) provides another illustration: Meat, fish, poultry and game are foodstuffs of animal origin. Oranges, tangerines, lemons, grapes and all kind of fresh fruits, onions, green vegetables and vegetables are also foodstuffs. This slight connection does not preclude that their nature is different. Only where the common heading is sufficiently narrow may this weigh in favour of an identical or similar nature. Example: Any kind of distilled spirits (being alcoholic beverages) is similar to any other kind of such spirits The various features of goods defining their nature (i) Composition (raw materials, ingredients or finished materials combined), (ii) Functioning principle (iii) Physical condition (e.g. liquid/solid), (iv) Appearance (design), (v) Value (price) of the good or service. Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 195

196 Identity and likelihood of confusion: Similarity of goods and services The relevant criteria determining the nature of goods are those that, in relation to the other goods or services, attract the attention of actual or potential customers on the marketplace. The importance varies according to the good concerned. The main relevant criterion may, for example, be - the composition: alcohol in alcoholic beverages (the shape of the bottle is often of little importance) or, conversely, - the appearance: toy (the composition is often unimportant). (i) Composition (raw materials, ingredients) of goods An identical or similar composition of the goods in question is not per se an indicator of the same nature. Examples: 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 connection with the preparation of dishes for human consumption, whereas the oils and greases are applied in conjunction with machines. Similarly, despite their similar physical characteristics, dog biscuits and bread for human consumption do not share the same nature. In particular, they have a different taste. In line with this latter example, the OD does not follow the decision of the 4 th Board of Appeal in S ORLANDO (fig.) / Orlando R0232/ (EN). The fact that milk products, flour and preparations made from cereals (CTMA) and foodstuff for animals (earlier German registration), are of the same nature cannot balance the numerous differences between these goods. The fact that the goods are destined to human or animal consumption is here the decisive factor. While the OD agrees with the finding in the last sentence (assuming that the milk products etc. are for human consumption), it does not share the view that the nature is the same. Similar to the comparison of dog biscuits and bread for human consumption above, the OD considers foodstuffs for humans and for animals as being of a different nature. Generally speaking, an identical or similar composition is not conclusive for an identical or similar nature if the raw materials of which the goods consist vary and can be substituted. This is different, i.e. conclusive for an identical or similar nature, where the composition characterises the good. Such will often be the case where the material of which the good is composed is precious or rare. Further examples: - Foodstuffs Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 196

197 Identity and likelihood of confusion: Similarity of goods and services The composition may or may not characterise foodstuffs. In the case of ice cream v flour confectionery the goods were held to be similar despite a different composition, in particular because both are desserts. However, in the case below (already quoted above, under (iv)) this is different because one set of the goods are main dishes, the other desserts and ingredients; one is of animal origin, the other is of plant origin: Meat, fish, poultry and game are foodstuffs of animal origin. Oranges, tangerines, lemons, grapes and all kind of fresh fruits, onions, green vegetables and vegetables are also foodstuffs. This slight connection does not preclude that their nature is different. 2339/2001 LA VIE CLAIRE (fig) / La Vie Claire (fig) (EN). - Timber v paper pulp et al. Timber (cl. 19) has a different nature from paper pulp; cellulose pulp for making paper; paper handkerchiefs, table cloths and serviettes, papers, cardboards and paperboards (cl. 1, 16) LOYAL / ROYAL (EN) (ii) Functioning principle The various functioning principles of a product include mechanical functioning, with or without engine/motor, optical, electrical, biological, or chemical functioning. Example of similar nature: Magnetic, electronic or optical carriers and semi-conductor devices (cl. 9), all incorporating digitised typefaces or printer s fonts in class 9 are similar to magnetic tapes (cl. 9). The nature is the same, as they all are carriers. 1623/2002 PRADO et al. / PRADO (EN) against 1298/2001 WAITEC (fig) / Wytek (fig) (EN), which is not followed. Examples of different nature: - Machines and machine tools (cl. 7) hand operated tools (cl. 8) EGA (fig) / EGA MASTER (fig) (EN), ROVEMA / RAVEMIA (EN) (but opposite conclusions as to similarity) - There are technical differences between printing plate benders (cl. 7) and assembly machines of cardboard boxes or like products (cl. 7). R0610/ PROFORM / PLAFORM (EN) Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 197

198 Identity and likelihood of confusion: Similarity of goods and services - Washing machines using washing powder (chemical) and new washing machines using magnetic waves for cleaning (iii) Physical condition (e.g. liquid or solid) Chocolate goods [bars] are of a different nature from beverages because they are food and not drink products. 1985/2001 GIOJA / JOIA (EN) (iv) Appearance There are goods where the appearance and not the composition, the functioning principles or the physical state is of paramount importance. Example: For certain toys it is of secondary importance whether they are of plush, cardboard, wood, metal, or other materials (save where certain safety standards must be met for young children). What is important for the customers is an attractive shape. 2628/2001 JAKO-O (fig.) / JOCKO (DE) reversed on other grounds by the BoA (v) Value (price) of the good or service Jewellery made of gold fashion jewellery. From a commercial point of view, golden or plastic earrings, for example, will be considered different because of their divergent value. But similarity may be found under other criteria. Therefore, caution should be exercised in distinguishing between luxury and everyday goods because the maker of one might well also offer the other Relation to other factors Nature may overlap with purpose and method of use. The method of use is often defined directly by nature and purpose Purpose Purpose defined Purpose means the intended use of the goods or services and not any accidental use. The term purpose is tantamount to the (economic) function of the goods/services. It shows the need satisfied (consumers) or problem solved (business customers). Purpose is a synonym for destination but that Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 198

199 Identity and likelihood of confusion: Similarity of goods and services latter term is not often used by native English speakers in this context (in French the term destination covers both purpose of use and customers ) Determining the proper level of abstraction It is sometimes difficult to determine the proper level of abstraction for the determining the purpose. This will be illustrated by using the example dentifrices / soap: The nature of both goods is defined by the fact that they are for cleaning, i.e. a basic purpose, and by their composition, which characterises the goods in their relationship: it is not possible to use toothpaste for washing hands. As far as purpose as a similarity factor is concerned, this cannot be the fact that both goods are for cleaning since this feature is already part of the factor nature. Rather, purpose as a separate factor must be defined on a higher level of abstraction. There are the following possibilities: (1) Cleaning different parts of the body, or (2) Cleaning teeth v hands/body in general? As all factors, the purpose must be determined from a commercial perspective. Since personal hygiene is usually seen as one entity, the purpose is cleaning different parts of the body. Purpose must not be interpreted in too narrow a way. Otherwise, the criterion will lose most of its value. This can be shown from the divergent reasoning in the two decisions below. The OD follows LIFE (fig) / LIFE. - Dentifrices in cl. 3 are not similar to soaps or hand cream in cl. 3. Dentifrices are used for teeth care and have a cleaning and hygienic purpose. The other cl. 3 goods may have a cleaning purpose but are used for skin care and not for teeth care. 1946/2002 Marco (fig) / Marca (fig) (EN) - Dentifrices have a low degree of similarity to soaps: dentifrices have some similarities to soaps as they are all used in connection with the same purpose: namely to clean the human body. 3043/2001 LIFE (fig) / LIFE (EN) For an overview on the relation between the factors nature, purpose and method of use, see below, under section 2.5. Same/similar purpose: Examples of same/similar and different purposes of goods/services Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 199

200 Identity and likelihood of confusion: Similarity of goods and services Veterinary preparations and preparations for veterinary medicine are like the supplements and nutritional additives to foodstuffs for animals of the earlier registration in that both sets of goods are designed to improve or maintain the health of animals. 645/2001 EQUIVITE / EQUIVET (EN) Sheets, plates and rods of plastic (class 17) and unprocessed plastics in class 1 share the same purpose. R 0799/ RODIO / RHODIA (fig.) (EN) Different purpose: Cement and bituminous coatings for floors and roofing et al. (cl. 19) are dissimilar to colours, fast dry protective coatings, lacquers et al. (cl. 2). The purpose of the cl. 19 goods is to form the floor itself, and the purpose of the cl. 2 goods is applying a decorative or protective coating to floors, walls or roofing ROWAKRYL/ MONACRYL (EN) Consequences of different purposes on the decision on similarity If one of the two pgoods has a very specific purpose there may be a strong indication of dissimilarity, as in the case of specialised software integrated in a haemodialysis machine and multimedia software. 713/1999 ALTRA LINK (cl.9) / ULTRALINK (cl.9, 38) (EN) (e) The relation between nature and purpose in particular Where the nature is different but the purpose is the same, similarity is frequently found, as the following three examples show. Example 1: Goods used in the kitchen in cl. 21 / cutlery (cl. 8) The goods in class 21, certain goods used in the kitchen, are similar to the goods in class 8, namely cutlery, although they have a different nature and perhaps different use. In fact they are all implements that are normally used to carry out tasks related to household purposes and, in particular, cooking or they are used in combination with, and at the same time as cutlery They are manufactured by the same enterprises and sold through the same trade channels, targeted to the same circle of customers. R 0478/ CUCINA & Co (fig.) / LA CUCINA (fig.) Example 2: Footwear / clothing Despite a different nature, in particular because of the same purpose, the goods are similar: Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 200

201 Identity and likelihood of confusion: Similarity of goods and services Footwear, shoes and boots serve the same purpose, in principle, as the items of clothing listed: they are intended for wear by humans, both as protection from the elements and as articles of fashion. R 634/ a (fig.) / a (fig.) (CFI case) Example 3: Pharmaceutical substances / plasters The goods of the application pharmaceutical and sanitary substances; medicines; pills are drugs or substances used for treating, preventing, or alleviating the symptoms of diseases or injuries due to accidents. Plasters are adhesive strips of material, usually medicated, for dressing different kinds of wounds. Materials for bandaging are therapeutic or protective materials used for dressing wounds or for binding a broken limb. Although all of these goods are of a different nature from the opponent s goods, they share a similar purpose, i.e. the cure of diseases, disabilities or injuries. 2940/2000 APEX/APEX (EN) Relation to other factors In general, the purpose is the most important factor. Since it defines the intended use of the good or service, it is the easiest way for a customer to identify such good/service. Based on the purpose, it is also possible to determine who the actual and potential customers, i.e. the relevant public, are. When the purpose is similar, the goods/services will usually be in competition and have a substantial overlap in the relevant public, i.e. the actual and potential customers. Furthermore, the method of use usually depends on the nature and purpose of the goods Method of use The method of use defines how the good is used to achieve its purpose. It can usually be inferred from the functioning principle of a good, i.e. the nature, and from the function that the goods or services fulfil in the marketplace (need satisfied or problem solved), i.e. purpose of its use. Method of use, therefore, often follows directly from the nature and purpose of use and then has no or little significance of its own in the similarity analysis. Example: Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 201

202 Identity and likelihood of confusion: Similarity of goods and services An iron is an electrical appliance (nature) for creating an even, wrinkle-less surface of shirts, trousers etc. (purpose). From the nature it follows that certain buttons must be pushed to make electrical current flow within the iron. From the purpose one can deduce that the iron must be moved to and fro to create the desired surface of a shirt, pair of trousers etc. Furthermore, just as the factor nature may be defined by a basic purpose (see above, under section ), a basic method of use may also co-determine the factor nature. Example: The nature of food is defined, inter alia, as a substance containing nutrients (composition) that can be ingested by a living organism (basic method of use). It should be obvious that this basic method of use cannot define the separate factor method of use because otherwise that factor would have no significance independent of the factor nature. In the case of vinegar, e.g., the method of use can therefore be defined by the way vinegar is used in to season foodstuffs, in particular by moving a spoon to and fro. Cf. below, under section 2.5. Where the method of use is not linked to nature or purpose of a product or service, the mere coincidence in method of use may still not have a great importance: baby carriages and lawn mowers are both moved forward manually but they are obviously dissimilar. However, the method of use may be important, independent of nature and purpose, where it characterises the goods: - In favour of similarity: Pharmaceutical preparations for treating medical conditions of the skin or of the hair can take the form of creams or lotions. Both sets of goods have the same method of use as cosmetics, which also include creams and lotions. 1981/2002 VITANOV / NOVA VITA (fig) (EN) However, even where the method of use characterises the goods under comparison and where it is identical for both goods, this fact alone will not be sufficient to establish similarity. - Against similarity: Rubbing pouring down Polish is applied manually by rubbing the surface of metallic objects with pieces of impregnated cotton or other material, whereas cleaning preparation is poured down blocked or infected waste pipes with the purpose of cleaning them. 456/2002 ALADDIN / ALADIN (EN) Riding in a wheelchair riding on a bicycle Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 202

203 Identity and likelihood of confusion: Similarity of goods and services A person who is riding a bicycle has to keep his balance when he is moving with the bicycle, while a disabled person sitting in a wheelchair needs to have a very secure and stable position while moving which include restraint systems to avoid dangerous movements. People riding a bicycle normally have the ability to get on and off the bicycle by themselves. In contrast, the disabled individual using a wheelchair needs, most of the time, another person to help them getting in and out this apparatus. This is an example where the method of use is conditioned by the purpose of the product. 1138/2002 PANTHER (fig.) / Panther (EN) Relation to other factors: Method of use often follows directly from the nature and purpose of use and thus is usually not a very important factor How to properly distinguish the factors nature purpose method of use The CFI s Hubert case (case T-110/01) is used as an example. The goods are: edible fats (graisses alimentaires) v. vinegar, sauces (vinaigre, sauces) Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 203

204 Identity and likelihood of confusion: Similarity of goods and services Factor Suggested definition factor of Suggested application of definition of factor Application by the CFI Nature The type of good (including a basic purpose and a basic method of use) Foodstuffs Definition of foodstuff: any material, substance, etc., that can be used as food Definition of food: any substance containing nutrients, such as carbohydrates, proteins, and fats, that can be ingested by a living organism [basic-level method of use] and metabolised into energy and body tissue [basiclevel purpose] Foodstuffs (definitions from Collin s e- dictionary) Purpose What the good is intended to be used for Everyday seasoning (upper-level purpose) Human consumption, i.e. the basic purpose and basic method of use (part of nature ) Method use of How the good is used to achieve its purpose Moving a bottle to and fro or moving a spoon to and fro Everyday seasoning foodstuffs, upper-level purpose of i.e Complementary Goods Principles Goods (or services) are complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other and is not merely auxiliary or ancillary. If these conditions are fulfilled, this weighs in favour of similarity. Customers may think that the responsibility for the production of both goods is the same. This impression is even more likely if the goods are also offered together. Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 204

205 Identity and likelihood of confusion: Similarity of goods and services Example: Smokers articles v filter cigarettes. They are of a different nature. However, there are various features which the respective goods have in common: the goods concerned not only have common end users, the smokers of cigarettes, but are, in particular, complementary to each other since they are both used for the purpose of consuming nicotine. This complementary character is quite strong since the use of filter cigarettes even requires complementary articles which can be used to light cigarettes. Therefore, the goods concerned are often bought by the consumers at the very same moment and in connection to each other. Furthermore, they are sold by the same retailers and, to some extent, distributed through the same trade channels. Nowadays, some manufacturers of filter cigarettes put lighters and matches on the market under their cigarette brand. 500/2000 BOSS (fig) / Baldessarini HUGO BOSS (fig) (EN). The fact that there are undertakings, which market complementary goods, such as smokers articles and filter cigarettes, under the same trade mark shows that it may be justified to infer a common origin from the complementary nature of goods. It further follows that the mere fact that goods are complementary may suffice to establish similarity of the goods, even a high degree of similarity. This factor is of importance, where the nature (in the example above, lighter cigarettes), the purpose (lighting smoking), the method of use (pressing a button inhaling) are different and the goods are not in competition (one cannot smoke a lighter). If the goods are complementary, the distribution channels and customers will often be the same. The OD practice concerning complementary character can also be illustrated by decision 1051/2002 DODIPETTO / dodie (fig) (EN): The fact that the broad wording of the earlier marks includes goods for babies [general cl. 3 goods, not restricted to babies, as well as babies bottles, babies bottle teats ], and that both the latter and clothing for babies can, at least sometimes, be found in the same selling points is not enough to justify the conclusion that they are complementary and similar. This case is at odds with a decision taken by the Fourth Board of Appeal, which is not followed. According to the Board, it seems that goods should be considered complementary when they have a purpose that can be associated with another purpose (this is apparently the meaning of the statement in the decision that clause a product satisfies a need that can be associated mentally to another need ) Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 205

206 Identity and likelihood of confusion: Similarity of goods and services A baby s cradle satisfies a need (that the baby sleeps) that can be associated to the need satisfied by a baby s pyjama or body (that the baby wears clothing for the night). R 0674/ MAMAS & PAPAS / MAMA S & PAPA S (EN) General examples (i) Complementary goods Cameras and film are complementary since they must be used together. Hardware software 554/2002 QUANTUM / QUANTUM (EN) Computers / machine-readable data carriers 398/2002 COMCONNECT / ComConnect (DE) Handbags - clothing, footwear: The goods handbags in class 18 are closely related to articles of clothing; footwear in class 25, in the sense that they are likely to be considered by the consumers as accessories to articles of outer clothing and even to footwear (for example women s handbags). Even if it is not usual for clothing manufacturers to directly produce and market handbags, it is reasonable that a significant part of the public considers such goods to be complementary accessories, because they are closely co-ordinated with outer clothing and footwear and they may well be distributed by the same or linked manufacturers. Moreover, these goods can be found in the same shops. 2008/2000 WANNABE (fig) / WANNAGO (EN). See also 1440/2000 GIORGIO (fig) / GIORGIO (fig) (EN) Towels are complementary to swimwear and beachwear in the sense that they are normally used when going to the beach or to the swimming pool. 435/2001 LORIS / FLORIS (EN). Belts (cl. 25) and shoes (cl. 25): 1481/2002 ROHDE / DANRHO (fig) (DE) Preservatives against rust paints, varnishes, lacquers 1496/2002 CASACOLOR / CAPACOLOR (DE) Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 206

207 Identity and likelihood of confusion: Similarity of goods and services (ii) Non-complementary goods On the other hand, if the connection is loose, the public is not likely to establish a link between the goods at issue: electric cables and software were not considered similar simply because they contribute to the operation of the same kind of machine. 922/1999 RADIFLAM (cl.9) / FLAM (cl.9, 42) (EN) Textile tissues for removing make-up are different from soaps. It would amount to absurdity to consider such goods to be similar on the sole fact that they may be used together. Their nature, purpose and method of use differ. 483/2001 MAJA / maxa (fig) (EN) (i) Similar Accessories The goods cosmetics and soap boxes, cosmetic cases, are offered for sale together and are always used together, and therefore may be considered as having the same origin. 611/1999 VERI (cl.3, 21) / VERITÉ (cl.3) (ES) Watch-cases are complementary to watches. 1850/2001 T (fig) / T (fig) (EN) Eyeglass lens cleaning solutions, frames, and accessories, namely eyeglass cases and chains and eyeglass lens cleaning cloths compared with contact lenses. 1475/2002 CONTINUA / CONTINUA (EN) (ii) Not similar Manicure cases (cl. 8) and cosmetics (cl. 3) 1479/2002 BARATTI / Mario Barutti (DE) Containers for the storage of drinks, in particular bottles for drinks (cl. 21) and certain alcoholic and non-alcoholic drinks in cl. 32 and 33 (different origin, different customers) 50/2002 la bamba (fig) / BOMBA (fig) (DE) Complementary character defined by consumer habits Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 207

208 Identity and likelihood of confusion: Similarity of goods and services Consumer habits that are often defined by tradition and local custom may also be important. Thus, it was held that the local custom of drinking beer and schnaps together in certain Member States was an indication of similarity. 982/1999 GIRAF (cl.33) / GIRAF GOLD (cl.32) (EN) Auxiliary or ancillary goods Certain goods or services can be considered auxiliary or ancillary in relation to specific other goods or services. A finding of "ancillarity" will generally not be suffice tto support a finding of similarity of the goods or services. This auxiliary/ancillary nature may not be present with respect to different goods/services. Example: financial services printed matter; the latter goods are auxiliary; there is no similarity between these goods and financial services..however, in relation to CD ROMs, printed matter is not auxiliary but, rather, may be in competition. Goods and services are not complementary and are not usually similar to the main goods/services (examples from classes 9, 16 and 38) (i) Class 9, 16, and 38 goods and services Financial services are not similar to class 9 and 16 goods in particular because these goods are only auxiliary tools and thus dependent ancillary goods to the provision of the financial services. The mere fact that financial services are provided by using software and data carriers does not make these goods and services similar. 188/2002 FOCUS / FOCUS TV (fig) (DE) Insurance and financial affairs (cl. 35) v cl. 9 goods and cl. 38 services, namely data processing equipment and computers, computer programs; communication services and data transmission by computer; scientific and industrial research; computer programming: Not similar, the cl. 9 and 38 products are only a working tool, the nature is different. R 518/ EUROPAY 6000 / EUROPAY (EN), 1356/2000 atlas (fig) / ATLASREISEN (EN), 1357/2000 atlas (fig) / ATLASREISEN (EN). (ii) In particular class 16 goods Organisation and conducting of exhibitions v paper, printed matter and other cl. 16 goods not similar 1444/2001 BLUMENTAL / Blumen Worldwide (fig) (EN). Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 208

209 Identity and likelihood of confusion: Similarity of goods and services Transport; packaging and storage of goods; travel arrangement v magazines, publications not similar (cl. 16) NATURA (fig) / Natura Comfort (fig) (EN) Sales promotion by manufacturers of goods or providers of services Merchandise given away for sales promotion purposes is not similar to the goods/services to be promoted. Rather, such sales promotion is to be considered like advertising (see below, under comparison of goods and services, section bb): Travel arranging and conducting of travel tours and leather products, clothing, games, sporting articles are not similar. For the purpose of considering goods and services similar, it does not suffice that it is customary for the providers of a service to hand over to clients goods as a complimentary gift, free of charge. 964/1999 THE GREY LINE (cl.39) / GREYLINE (cl.18, 25, 28) (EN) (affirmed R 72/ (EN)) Similar considerations apply where a manufacturer of goods or a provider of services gives away goods, such as T-shirts, CDs, wallets etc., for merchandising purposes Relation to other factors The complementary factor plays its most important role where the goods are different in respect of nature and purpose (and following therefrom, usually also method of use) and where they are not competitive. The mere fact that goods are complementary may suffice to establish their similarity. If a complementary relationship is found, the distribution channels will often be the same Goods in competition The goods at issue are in competition with each other when they are offered to the same group of customers who may choose to substitute one for the other for the same purpose. In such a case, the goods are also defined as economically interchangeable. The price may be a criterion but not necessarily so. For instance, jewellery made of gold and fashion jewellery compared above under nature (see sec b.(v)), are in competition even though their price (and value) greatly differ. Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 209

210 Identity and likelihood of confusion: Similarity of goods and services On the other hand, the price of goods in competition will often not differ substantially if properly calculated. For instance, new car sales and car leasing are in competition even though the price for a new car is substantially higher than that of the monthly leasing payments. However, overall, the price for the leasing of the car over the usual time of leasing will be in the same range as the price for a new car. 1386/1999 ROWA (cl.19, 27) / OWA (cl.6, 17, 19) (DE) Paper coffee filters are in competition with plastic or metallic filters, as they have a similar size, shape and function, they cover the same needs and the difference in price is not considerable for the average consumer, being also justified by the longer durability of the plastic or metallic filters, so that, taking into account the life span of these filters, they might even be cheaper overall than the number of paper filters that would have substituted them. 44/1999 TELIA (cl.21) / Teeli (cl.21) (EN) Goods in competition share the same actual and potential customers. 45/1999 FLORA (cl.32) / LORA DI RECOARO (cl.32, 33) (EN) A significant part of the public will usually be familiar with both kinds of goods and will be accustomed to seeing equivalent or interchangeable goods coming from the same enterprise. 167/2000 MIXERY (cl. 32) / MYSTERY (cl.29, 30, 32) (DE) (CFI case) Examples: Wallpaper (cl. 24) and wallpaper made of textiles (cl. 27) v paints: competitive and complementary, sold in specialised shops, therefore, the goods are similar. However, woven wall decoration (cl. 24) and paints are neither competitive nor complementary and are sold in different shops. They are dissimilar. 1496/2002 CASACOLOR / CAPACOLOR (DE) Relation to other factors: Goods are usually competitive when they have the same purpose and are in a similar price range Distribution channels, in particular placement in the same points of sale Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 210

211 Identity and likelihood of confusion: Similarity of goods and services Major categories of distribution channels - Direct Sales - Selling directly to the customer of the product. There is no agent between the company and the customer. Supplying financial planning services to individuals is an example of direct sales. Catalogue sales or sales over the Internet are also examples of this method. - Indirect Sales: Retail - Selling to a retailer whose salespeople then sell to the customer. Selling organically grown herbs to a local grocery store is an example of indirect sales. - Indirect Sales: Wholesale - Selling to a wholesaler or agent who sells goods to retailers. The wholesaler most likely represents several companies. (It is more efficient for the retailer to have one source for many products instead of dealing with an unwieldy number of individuals.) Selling novelty pet accessories to wholesalers who resell to a variety of pet care stores, animal clinics and other retail outlets is an example of selling to wholesalers or agents. - Indirect Sales: Multi-level Marketing - Selling both directly to customers and to other sales people the seller has recruited to sell products The relevance of the same distribution channels in general If the goods are made available through the same distribution channels, the consumer may be more likely to assume that the goods or services are in the same market sector and are possibly manufactured by the same entity and vice versa. 1471/1999 KALZAN (cl.5) / QANZA (cl.5) (DE), 1466/1999 FLORIDA SUN (cl.32) / FLORIDA SUN (cl.32) (EN) The relevance of the same sales outlets in particular The following quote from a WIPO document summarises the appropriate importance to be given to identical or similar sales outlets. Not too much emphasis should be placed on this criterion as modern supermarkets, drugstores and department stores sell goods of all kinds. Therefore the point of sale is less decisive when deciding whether consumers consider that goods share a common origin merely because they are sold at the same outlet. Nevertheless, the criterion may be valid in cases in which goods are sold exclusively or commonly in specialised shops. In that event, consumers may tend to believe the origin of the goods to be the same if they are both sold in the same specialised shops and may tend to deny that mutual origin if they are not usually sold in the same shops. Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 211

212 Identity and likelihood of confusion: Similarity of goods and services (WIPO Introduction to Trademark Law and Practice, The Basic Concepts, A WIPO Training Manual, Geneva 1993 (2d edition), 1998 reprint, Item ) Coincidence of sales outlets and distribution channels may be significant because it may show a physical proximity of the goods and marks on the market. Where the goods are offered together in the same kind of outlet, there is a bigger chance that the consumer will encounter them in the same shop, often simultaneously. 1339/1999 LINOLA (cl.3) / LIOLA (cl.3) (EN) Moreover, the kind of outlet concerned may also reveal the trade customs and marketing techniques involved in the promotion and sale of a specific kind of goods. Such circumstances may show for example if the consumer has the opportunity to examine a good before buying it, if it is sold over the counter or electronically, if it is tried on before sale etc. These considerations are, however, relevant only in the final assessment of likelihood of confusion, not for the similarity of goods (see, e.g., part B IV 4). 394/1999 L (cl.25) / L (cl.25) (EN) Often, a particular good will be offered for sale in more than one way, as in the case of shoes that may be found both in specialised traditional shoeshops and in designer or one-brand shops where they are offered for sale together with articles of clothing and accessories. An alternative way of marketing will have to be taken into account provided that it is an established practice in the relevant territory. A similar issue arises where a large number of loosely connected or clearly different goods are sold in the same outlets, as in the case of supermarkets, department stores, malls, commercial complexes etc. The diversity of the goods sold and the services provided in this way on the one hand, and the size of such premises on the other, make it less probable that the consumer will establish a link between the goods and attribute the same origin to them, because he is aware that goods sold in supermarkets come from a multitude of independent producers. Therefore, the mere fact that certain goods or services may be found in this type of outlet is at best a weak indication that they are similar. An additional condition will usually have to be met in these cases in order to make a similarity of goods more plausible, namely that the goods in question are also offered in the same section of such stores or supermarkets, where it is common to find homogeneous goods together. 76/1998 NEGRITELLE (cl.30) / LOS NEGRITOS (cl.5, 29, 30) (EN), 1117/1999 CHATELDON (cl.32) / CHATELDON (cl.33) (EN). Example of different sales outlets: Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 212

213 Identity and likelihood of confusion: Similarity of goods and services Wheelchairs bicycles, 1138/2002 PANTHER (fig.) / Panther (EN): With regard to the distribution channels of the goods in dispute, it has to be noted that the goods of the earlier mark are likely to be sold either in specialist bicycle stores or in a retail store where sporting equipment is available. On the contrary, the distribution channels of goods from the contested application are specialised distributors of medical equipment and devices supplying hospitals and specialised shops where devices for disabled or physically handicapped people are sold Relation to other factors Where the distribution channels are different, the public will often be different as well The relevant public, i.e. the actual and potential customers Principles The determination of the relevant public serves to reveal not only who the customer of a particular good is and, therefore, what their degree of sophistication and attention is. It also shows the extent to which the purchasing public of the respective goods or services coincides. The customers therefore constitute another factor to be dealt with in the analysis of the similarity of the goods/services, even though the Court has not expressly mentioned it as a criterion as such (just as it has not mentioned end users; as stated, this is an incorrect translation of Verwendungszweck, i.e. purpose of use). 28/1999 CHEF (cl.21) / CHEF (cl.21) (EN) The mere fact, however, that the potential customers overlap does not constitute an indication of similarity. One and the same group of customers may be in need of goods or services of the most divergent origin and nature. The fact that, for example, television sets, cars, and books are bought by the same customers, namely the public at large, has no impact on the similarity analysis. In many cases either one or both sets of goods are targeted at the public at large, but the purpose (consumers needs covered) in each case is different. Such circumstances weigh against similarity. Hence, travel bags and cases for drawing instruments were not found similar, since, even where they share the same public, they have a different purpose (cover different consumers needs) and will be used in different circumstances. 1031/1999 STARTER (cl.16) / STARTER (cl.18) (EN) Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 213

214 Identity and likelihood of confusion: Similarity of goods and services Diverging publics weigh against similarity If it could be excluded that the two different groups of purchasers would ever be confronted by both marks in conflict, they could not be confused. However, in practice, it will hardly ever be possible to make a finding like this. Where it is highly unlikely that the two goods (or services) will both be encountered by their potential purchasers in the usual course of events, the purchaser of the respective other product, in particular a business customer, may still have a certain knowledge of the pertinent market. Nevertheless, such a situation is a strong indication of dissimilarity of the goods/services. 713/1999 ALTRA LINK (cl.9) / ULTRALINK (cl.9, 38) (EN) Divergences between the relevant publics can exist where the goods of both specification are targeted only to consumers or only to business customers. Divergences may be present as well in the case where one relevant public consists of consumers and the other of business customers. It should be borne in mind, however, that even where only business customers are targeted, this public also acts as ultimate consumers. Therefore, the distinction between ultimate consumers and business customers is not absolute but there are overlaps. (For a definition of the terms consumers and business customers see above, under B I c.) The following pairs of goods are examples of widely divergent publics. - Consumers Different applications of pharmaceuticals: contraceptives for women and prostate drugs. Wheelchairs and bicycles 1138/2002 (EN) PANTHER (fig.) / Panther - Business customers Goods only bought by industry, or only sold wholesale, as in the case of raw materials or commodities sold in bulk. Manufacturers or dealers are traders and as such have bigger market experience and trade mark awareness, which renders confusion less likely in their case. Thus, it was held that insecticides are dissimilar to solvents for the lacquer industry, since their respective consumers operate at different levels of the market. 877/1999 SOLVENON (cl.1) / SOLVENAL (cl.5) (EN), - Consumers business customers Polishing agent intended for domestic use on the one hand, cleaning agent addressed to the metal working industry on the other. Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 214

215 Identity and likelihood of confusion: Similarity of goods and services 456/2002 ALADDIN / ALADIN (EN) Containers for contact lenses are small objects used for storing and protecting contact lenses. The end users of these goods are the average consumers whereas all the opponent s goods [surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials in class 10] are targeted at surgical, medical, dental or veterinary practitioners. The applicant s goods are usually sold at opticians. The applicant s goods are not similar to any of the opponent s goods. 2940/2000 APEX / APEX (EN) Different price ranges are an important factor if they show that the goods/services are chosen by entirely different groups of customers. In that case, the products would be marketed through different distribution channels. However, buyers of the low-priced goods/services may have heard of the expensive products and think that the manufacturer or provider has expanded its product line. Also, buyers of high-priced goods may also buy low-priced goods. Depending on the case, therefore, different price ranges may or may not weigh against similarity. (See also above, sub b.(v).) Despite different persons or creatures consuming a product, the customers can still be the same: The respective goods (milk products- flour and preparations made from cereals' on one side- and 'foodstuff for animals- including nonmedicated food additives and food supplements for animals' on the other) are not intended for different end-users. They are intended to feed different consumers, namely human beings and animals, respectively. However, the end user of the foodstuff for animals is not the pet that will eat it, but the human being that takes it from the shelf. R232/ S ORLANDO (fig.) / Orlando (EN) Relation to other factors Distribution channels: Where the distribution channels are different, as in the case of different levels of the market (e.g. raw materials finished goods), the overlap between the customers will be small Usual origin Usual origin, i.e. the undertakings in control Usual origin is the same: goods/services may be similar Principle Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 215

216 Identity and likelihood of confusion: Similarity of goods and services WIPO has suggested the following test of similarity of goods and services: As a general rule goods are similar if, when offered for sale under an identical mark, the consuming public would be likely to believe that they came from the same source. All the circumstances of the case must be taken into account, including the nature of the goods, the purpose for which they are used and the trade channels through which they are marketed, but especially the usual origin of the goods, and the usual point of sale. (WIPO, Introduction to Trademark Law & Practice, Item ) While it is true that the Court has not mentioned the usual origin of the goods (or services) in conflict as one of the relevant factors for similarity, it should follow from the 7 th recital to the CTMR and the Court s definition of likelihood of confusion that the usual origin of the goods or services is of particular importance for the similarity analysis. As stated above, under B II 4.1., according to the 7 th recital to the CTMR an interpretation should be given of the concept of similarity in relation to the likelihood of confusion. The Court has defined likelihood of confusion as 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 (Canon, paragraph 29). It follows that the connections between the goods and services must be capable of suggesting that they come from the same or economically linked undertakings. According to the approach of the Opposition Division, the question as to whether the origin of the goods and services is the same is assessed in the framework of similarity on an objective basis. The question as to whether the relevant public is aware of such origin is addressed in the final global assessment analysis in the context of the sophistication of the customers (B.IV.5.2.). From the Court of Justice s definition of likelihood of confusion it follows that, where the compared goods and services usually have the same origin, i.e. come from the same type of undertaking or from economically-linked undertakings, this is a strong indication of similarity. 1195/1999 DELI / DELI CHEF (EN) However, two provisos apply to this conclusion: - It is not sufficient for the criterion usual origin that the goods or services in question are manufactured or offered by a limited number of undertakings, such as big concerns that are responsible for a wide range of goods or services in divergent business sectors. What matters, rather, is the usual offering of the goods/services in the relevant business sector Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 216

217 Identity and likelihood of confusion: Similarity of goods and services since only such usual offering can influence the public s perception. As stated, the public s perception will be discussed in the final globalassessment analysis. - Nor is it the criterion usual origin of relevance for marques de commerce. Such marks are frequently used to label goods that are not similar among each other and are not manufactured by the same or economically-linked undertakings. The Court of First Instance has recognised that the usual origin may be of relevance for the similarity of goods. In ELS/ILS (case T-388/00) the Court held: It must be observed that, in order to supply services involving the 'development and running of correspondence courses', it is both helpful and usual to make use of 'educational textbooks and printed materials namely student workbooks, catalogues, teaching manuals, printed instruction materials and charts and booklets designed for students seeking to learn English as a second language'. Thus, undertakings offering any kind of course often hand out those products to pupils as support learning materials (paragraph 55). Similarly, the Court said in MYSTERY/Mixery (case T-99/01): The Board of Appeal found that beers and other beverages could come, in particular in the bottling and marketing stages, from the same undertakings, could be sold side by side and had the same destination The Board of Appeal therefore rightly concluded that the goods concerned in Class 32 were similar (paragraph 40). (Emphases added.) Considering the same usual origin as a factor in the analysis of the similarity of goods/services should not be misinterpreted as turning the examination of likelihood of confusion and similarity upside down: by anticipating the outcome of an analysis, which is supposed to be based on a number of factors (nature, purpose etc.), which should determine the perception of usual origin in the mind of the relevant public. Rather, the factor usual origin is of relevance mainly where it can be safely established that the usual origin of the goods/services is the same or is different. Example 1: Clothing and footwear Many manufacturers and designers will design and produce both. This is especially true of retail outlet chains or chain stores, which will often provide footwear and clothes under the same trade mark. R 634/ a (fig.) / a (fig) (EN) (CFI case), 2001/2002 PANAMA JOE'S GRILL-CANTINA-BAR / PANAMA JACK (EN). Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 217

218 Identity and likelihood of confusion: Similarity of goods and services Example 2: IT, telecoms and video A prime example for the same undertakings in control of goods and services are the IT (information technology), telecommunications and video industries that have been converging since the mid-90s. The same applies to the IT and electrical engineering industries in general, especially in the area of consumer electronics. These goods and services are therefore similar. 507/2002 T Flexitel / FLEXITEL (DE) (IT - telecoms), Delta Access (fig.) / DELTA (DE) (consumer electronics), 398/2002C ComConnect/comconnect (DE) (electrical engineering). Example 3: Entertainment industry There are manifold interrelations in the entertainment industry. They make it possible to assume that manufacturers of recorded videocassettes are economically linked with undertakings that rent such cassettes Prinz Dracula / Dracula (DE) Established trade custom required The need for an established trade custom as explained in the previous section is of particular importance where manufacturers expand their businesses to adjacent markets, e.g. from clothing to cosmetics. In such situations it is necessary to determine whether such expansion is common in the industry or, conversely, whether it may occur in exceptional cases only. Example where extension has become customary: - The trend in the brewing industry to expand its line to alcohol-free beer. 45/1999 FLORA (cl.32) / LORA DI RECOARO (cl.32, 33) (EN), 167/2000 MIXERY (cl. 32) / MYSTERY (cl.29, 30, 32) (DE) - shoes handbags 2008/2000 (EN) TJ s (shoes) / TJ Collection (handbags), 1440/2000 (EN) Giorgio (shoes) / Giorgio (handbags). Example where extension is not (yet) common: - Internet services content The presence of interrelations between Internet service providers and content providers (vertical integration, e.g. AOL Time Warner or Vivendi Universal) would make it possible to hold content, such as motion picture production, to be similar to telecommunications services if this were an Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 218

219 Identity and likelihood of confusion: Similarity of goods and services established commercial custom. However, it is not yet clear whether or not this trend will stabilise. This is an example of changing business customs. Therefore, the OD, for the time being, holds telecommunication services and the content sent through the telecommunications network to be dissimilar. This is illustrated by the following case: Production of audio-visual work for television, cinema and radio (cl. 41) v telecommunications (cl. 38). Telecommunication providers will release these performances; however, this does not make the services similar. Their different nature and purpose (to communicate versus to inform or entertain) make these services different TELENOR CTMA / TNE TELENORDEST (EN) - Jewellery - hotel services (example Bulgari in Italy not sufficient) Finally, it is sufficient if a substantial part of the goods/services are made or provided by the same or economically-linked enterprises. This may be the case, e.g., if the usual origin of the goods in question is identical only in the upscale market segment, e.g. in the case of clothing and cosmetics. In such cases, however, the similarity of the goods or services may only be very remote if many other similarity factors are different, as is the case in the example of clothing and cosmetics 1642/2002 EVOLUTION (fig) / Evolution the World of Sacred Device (EN) Marketplace reality is decisive Overlaps of origin must always be clearly established from the marketplace reality and cannot be assumed on a theoretical basis. For instance, financial services are not similar to automatic vending machines. Financial establishments, or companies that are economically-linked with them, do not usually manufacture automatic vending machines. Decision R 518/ EUROPA 6000 / EUROPAY is therefore not followed in this respect. The OD practice is set out in case 507/2002 T Flexitel / FLEXITEL (DE). It is also not possible to take theories derived from market research as a basis for the conclusion that the goods/services in question are usually offered under the responsibility of the same undertaking. Research has identified the following two factors as suggesting extension of a trade mark owner s business activities to different fields: - Strength of the mark - Level of abstraction of the trade mark position Example: Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 219

220 Identity and likelihood of confusion: Similarity of goods and services The trade mark Virgin in the U.K. is said to be linked to rebellion against the establishment. Thus, the mark can be used for many different goods/services. The mark was initially used for mail order of records, now it is serves, inter alia, for an airline and a financial service company. Since no concrete business habits have been established in the sense that the services record mail order, airlines, and financial services are usually provided by the same or economically-linked undertakings, these goods and services are not similar. Even if a such business habits were established, that alone would not make the goods and services similar, given their divergences in respect of other similarity criteria, such as nature, purpose etc Usual origin is different: goods/services may be dissimilar Conversely, if the goods in question are made by different kinds of undertakings, this weighs strongly against similarity. 304/1999 DELI-BIMBO (cl.30) / DELI CHEF (cl.30, 42) (ES) For instance, cars and bicycles are usually made by different undertakings. The fact that some companies, such as Peugeot, manufacture both is not decisive because it is not an established trade custom. Similarly, wine and coffee were held to be dissimilar because these goods originate from different manufacturers. 3041/2001 CANALETTO (fig.) / CANALETTO (EN) Same or similar production places and/or methods of manufacture If it cannot be clearly established whether the goods in question are manufactured by the same kind of undertaking, it may be possible to infer such common origin if the place or geographical zone of production of the goods, or the time or method of manufacture are the same. It should be noted that in Canon the Court specifically referred to the place of production and held that, in order to demonstrate that there is no likelihood of confusion, it is not sufficient to simply show that there is no likelihood of the public being confused as to the place of production of the goods (Canon, paragraph 29). This statement, however, should not be interpreted in the opposite sense, namely that the fact that the place of production cannot be a strong indicator that the goods/services in question come from the same source. It may be that despite different places of manufacture the goods are still similar. For instance, books and electronic media (goods in competition, e- media substituting books) are both goods of a publishing house, as is the equivalent content provided online. Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 220

221 Identity and likelihood of confusion: Similarity of goods and services Examples regarding manufacturing sites: - Same sites All kinds of chemicals: varnishes, lacquers, colorants and mordants are normally produced in the same production enterprises, normally specialised chemical companies, Rentolin/RENOLIN, R 0837/ (EN) - Different sites Video film cassettes, production of films for cinemas and television organisations et al. v motion picture cameras, television filming and recording devices (Canon) It should be repeated that while the same manufacturing sites suggest a common usual origin, different manufacturing sites do not exclude that the goods come from the same or economically-linked undertakings. Examples regarding method of manufacture: - Same method Belts (cl. 25) and shoes (cl. 25): 1481/2002 ROHDE / DANHO (fig) (DE) - Different method Pharmaceutical products differ from napkins and napkin pants for incontinence with regard to their method of production. R 0807/ DEMARA / DEMAR ANTIBIOTICOS, S.A. (EN) Relation to other factors The factor is of relevance mainly where the usual origin can safely be established independent of a detailed analysis of the other factors and where it is clear that the public is aware thereof. 3. Similarity of goods: raw materials, ingredients and parts / components / fittings 3.1. Raw materials Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 221

222 Identity and likelihood of confusion: Similarity of goods and services In most cases, the mere fact that one good is used for the manufacture of another will not be sufficient in itself to show that the goods are similar, as their nature, intended purpose and customers may be quite distinct. Raw material is intended for use in industry rather than for direct purchase by the final consumer. This was held in the cases of animal skins and clothing or precious metals and jewellery. 46/1999 OXYDO (cl.25) / OXYDO LAMBFURS (cl.18) (EN), 452/1999 ECO-PEL (cl.25) / ECOPEL (cl.18) (DE), 149/2001 Arcadia (fig) (cl 14) / Arcadia (cl14), 1190/1999 FOUR SEASONS (cl.25) / 12 SEASONS (cl.24, 25) (EN). However, the final conclusion may depend on the specific circumstances of the case, such as the degree of transformation of the raw material, if it is the basic component of the final good, the extent to which it determines the overall price of the final good, whether the trade mark of the intermediate product used survives in the final good, etc. The greater the significance of the raw material for the final good, the more likely will the goods be similar Ingredients of prepared food A specific example in this context is that of the basic ingredients included in prepared foods. As regards similarity between ingredients included in prrepared food and prepared food itself it is OD practice The OD does not go as far as the Board of Appeal according to whose case-law almost all foodstuffs have at least a certain degree of similarity (see already above, under b. (i)). The current OD practice is to examine if the ingredient can be considered as a basic component of the final product. Furthermore, the final conclusion may depend on other factors, such as the degree of transformation, whether the public may expect the ingredient to be produced by the same manufacturers or the way in which the two products will be sold on the market. - OD practice In most cases, the mere fact that one basic ingredient is used for the manufacture of another will not be sufficient in itself to show that the goods are similar, as their nature, purpose and customers are generally be quite distinct. 1955/2001 HAPPY / HAPI (EN) (eggs v ice cream; coffee, cocoa, sugar, honey v ice cream), 1926/2001 EARTHGRAINS (fig) / EURO GRAIN (EN) (bread v flour), 241/2001 CANDY CASTLE (fig) / CANDY CARL (EN) (sugar, honey treacle v confectionery). However, at least a low degree of similarity can exist as long as the basic ingredient can be considered as a main ingredient of the prepared dish. Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 222

223 Identity and likelihood of confusion: Similarity of goods and services 1955/2001 HAPPY / HAPI (EN) (milk, milk products v ice cream). OD does not go as far as some decisions of the Boards of Appeal according to which almost all foodstuffs have at least a certain degree of similarity (see already above, under b. (i)). - BoA practice The Third Board of Appeal seems to have a much more liberal approach as regards foodstuffs. The OD position is that there may be a degree of similarity between an ingredient and a prepared dish due to the fact that this ingredient is one of the dominant ingredients or that the consumer may reasonably expect to find that ingredient in the prepared dish. In contrast The Board seems to considers that as soon as there is a possibility that an ingredient may be included in the preparation there is a degree of similarity between the goods. According to that logic, for example, the Third Board of Appeal will consider that coffee, tea, cacao, sugar may be considered similar to ice cream or confectionery. R 152/ DIPPIN S DOTS / DIPPIN DOTS (fig) (EN), R 253/ SELZ SODA (fig) / SELZ (EN). The same Board has very often based its reasoning also on another wider criterion, which is that foodstuffs will quite often be combined. Although they are independent goods, they will be offered together either in restaurants or in supermarkets (vinegar and sugar). Following the Third Board of Appeal position, almost every foodstuff will have at least a low degree of similarity with other foodstuffs. The First Board seems to have taken a similar approach: concur. In R 160/ O SOLE MIO! / Sole Mio (fig), it held flour and preparations made from cereals, bread, pastry, salt, edible oils and fats to be similar to pizzas. The goods are similar not only because they are basic food products but also because they are basic ingredients of pizzas. The approach of these decisions would lead to a finding of at least some similarity between all foodstuffs. This is however, in the view of OD, not in line with the general principles established by the ECJ, and OD will continue to base its decisions on the approach described above Parts, components and fittings Another common case is that of the parts, fittings and components, integrated in composite industrial products, such as machines, installations and the like. The remarks made in respect of raw materials are to a certain extent also valid in the case of parts and components. The mere fact that a certain good is a component of a complex product will not necessarily be conclusive for a finding of similarity, as held for example in the case of valve actuators and Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 223

224 Identity and likelihood of confusion: Similarity of goods and services hydraulic machine tools. Similarity will be lacking particularly if the components were bought owing to their technical specifications. 693/1999 MAS (cl.6, 7, 8, 9) / amax (cl.7, 9) (EN), i-scan / High-Scan (DE). However, parts and fittings are often produced and/or sold by the same undertaking that manufactures the final product and target the same purchasing public, as in the case of spare or replacement parts. Depending on the good concerned, the public may also expect the component to be produced by, or under the control of, the original manufacturer, which is a factor that suggest that the goods are similar. In general, a variety of factors may be significant in each particular case. For instance, if the component is also used or sold independently, or if it is particularly important for the function of the machine, this will weigh in favour of similarity. In 665/2000 Eureco (cl. 12 motor land vehicles) / Eureco (cl tyres) it was held that despite differences between the goods, the close proximity between them and the complementary nature of the goods led to a low degree of similarity. On the other hand, in 199/1999 CUPPER (cl.12) / COOPER (cl.12) (EN) the OD concluded that the goods vehicles and tyres are complementary but that the end users will distinguish the different origin of the goods and that the goods belong to different markets. The degree of similarity of vehicles and tyres is very low. For a finding of likelihood of confusion, therefore, the signs must be identical or at least very similar. 4. The comparison of services with services In principle, the same factors as for comparing goods with goods are relevant for the comparison of services with services. However, in applying these factors, the basic differences between goods and services, and in particular the lack of embodiment of the services, must be considered. Below, a number of examples for the application of various similarity factors in OD practice are given Nature The nature can be defined, in particular, as the manner in which the service is provided. The following examples illustrate a number of specific approaches to applying the nature criterion to services. - Services falling under the same broader category Financial management has the same nature as business management as both are management services. On the other hand, they have a Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 224

225 Identity and likelihood of confusion: Similarity of goods and services different purpose, the first being a financial purpose, the latter a business purpose. 1621/2002 EUROHYPO / EUROHYPO (EN) - Nature defined by the composition of a service The service production of television programmes is similar to entertainment because the latter service includes television entertainment which is the outcome of a number of distinct but complementary activities generally provided by scriptwriters, actors, cameramen, lightning technicians, directors, makeup artists, etc. The expression production of entertainment embraces all these services. R 1226/ GEO TV / GEO (fig) (EN) 4.2. Complementary services Complementary character (similarity) accepted Insurance is a complementary service to banking services that might be offered by banks themselves or other financial institutions. Furthermore, it is not uncommon for insurance companies to also carry out bank activities and the financial market of today is seeing an integration between banks and insurance companies for instance through mergers and acquisitions. The public at large, which will normally use the services for different purposes, will associate the activities with each other since they might be offered by the same company and even in the same premises. R 38/ ADVANTA (fig) / ADVANTAGE (fig) (EN), 2507/2001 BAMB (fig) / BAM (EN). Travel arrangement (cl. 39) is complementary to providing food and drink and temporary accommodation in hotels and restaurants (cl. 42). Travelling necessarily involves accommodation and catering. Moreover, the services are commonly offered together by travel agencies in the form of package holidays atlas (fig) / ATLASREISEN, atlas (fig) / ATLASREISEN (fig) (both EN) Building services (cl. 37) and designing hotels (and/or businesses) for entertaining and providing leisure for guests (cl. 42) are complementary INTER HOTEL (fig) / DEUTSCHE INTERHOTEL (EN) Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 225

226 Identity and likelihood of confusion: Similarity of goods and services Complementary character (similarity) denied Instruction and entertainment services and publishing services are not complementary since the link between them is not strong enough: The instruction and entertainment services may include publication of instruction or entertainment materials as part of the main services. However, this is not sufficient to render these services similar. Materials are very often published as a support for many activities. But see below, under sec b. 712/2001 GRUPO TELEKOM (fig) / TELEKOM (fig) (EN) 4.3. Services in competition Edition of digital and analogue recording carriers containing certain information v publication and edition of books, newspaper and magazine (both services in cl. 41). They are similar because publishing houses offer their texts not only in print but also in digital or analogue form. 1198/2002 MicroFocus (fig) / FOCUS (DE) 4.4. The relevant public Because of only a small overlap of the publics concerned, insurance and financial affairs (cl. 36, CTMA) were held to be only very remotely similar to the edition of multimedia chip card systems (cl. 42), or to chip cards, magnetic cards, bar code carriers, bar code cards (cl. 9). The edition of chip card systems is directed at business customers, not at consumer customers who mainly use the insurance and financial affairs services. Business customers, on the other hand, will be more attentive and recognise that insurance and financial companies do not usually offer the technological card services or manufacture the cards themselves. Nevertheless, a small overlap between the relevant public does exist because business customers also act as private individuals and, thus, as ultimate consumer customers. 2066/2001 DENCARE / DentCard (fig)(de) 4.5. Usual origin Auto care services v packaging and storage of goods: dissimilar. The average consumer is aware that the relevant sectors of industry are clearly different and thus he is not likely to attribute the same origin to them , SMART / SMARTRAIL (EN) Production of audio-visual work for television, cinema and radio and advertising: dissimilar. In the field of advertising it is very common to produce TV commercials (i.e. advertisements on radio or television). To that Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 226

227 Identity and likelihood of confusion: Similarity of goods and services extent there could be a link between these services. However, the company which renders the service of advertising, whose purpose is the promotion of goods or services for sale, does not usually produce the commercials themselves but subcontracts this service to a company specialised in producing (i.e. organising, directing supervising and presenting). Accordingly, the nature is different and so are the users. It is unlikely that the company which needs to promote a product or a service would direct its attention to a producer and not to an advertiser. Therefore, in spite of the connections between these services, they are considered different TELENOR, TELENOR MEDIA España S.A. / TNE TELENORDEST(fig) (EN) See also THE BOX (fig)(cl. 9) / BOXNEWS (cl. 35) (EN), 2272/2001 PICCOLINO et al. (cl. 25) / PIKOLINOS (fig) (cl. 35) (EN). 5. The comparison between goods and services 5.1. In general The same principles that apply for the comparison between goods & goods and services & services apply in cases where goods are compared with services. As a starting point, there are numerous differences between goods and services. By their nature goods are generally dissimilar to services. This is because goods are articles of trade, wares, merchandise, or real estate. Their sale usually entails the transfer of title in something physical, i.e. movables or real estate. Services, on the other hand, consist in the provision of intangible activities. Yet a variety of services provided over the Internet are tantamount to goods, namely music, videos, software, and regular publications. 2607/2000 ENVIROMET, ECOMET / EnviroMed (EN) Goods and services can, however, be complementary (e.g. maintenance may be complementary to the good concerned). Services can also have the same purpose, i.e. intended use, and thus be in competition with goods. For instance, car leasing, a financial service, may be considered in competition with cars. It follows that, under certain circumstances, similarity between goods and services can be found. Two specific categories may be distinguished: services usually provided independently of the corresponding goods or vice versa and services where no such assumption can be made. Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 227

228 Identity and likelihood of confusion: Similarity of goods and services 5.2. Services usually provided to customers without the need to purchase the corresponding goods (or vice versa) A trade custom may be established according to which the same undertakings usually provide services to customers independent of whether or not they have purchased the corresponding goods (or vice versa). That means that the services are not merely ancillary to the goods, such as the repair or maintenance of a machine by the manufacturer of that machine. Such a trade custom strongly weighs in favour of similarity. Examples: - Hygienic and beauty care v cosmetics Megadent / MENTADENT (DE) - Film rental v motion pictures; services of an optician v spectacles; automatic vending machines v rental of such machines Prinz Dracula (fig.) / Dracula (DE) - Goods and services that undertakings provide independently of each other: the information technology (IT) and telecommunications (telco) business Apparatus for recording, transmission or reproduction of sound, images or data (cl. 9) are similar to telecommunications (cl. 38) 507/2002 FLEXITEL / T --- Flexitel (fig) (DE) against 1936/2002 WELCOME / WELCOME Real Time (EN) and 1642/2002 evolution (fig) / EVOLUTION The World of Sacred Device (EN), which are not followed; but see section 8.4. where it is stated that IT/telco goods and services are not similar to any other (non IT/telco) goods/service simply because they are used in conjunction with each other - Certain services whose object is the production of a good; example: printed matter v publication: Publishing services v books: The publishing services constitute a natural part of the goods. The book would not appear on the market without the publication. The core activity is to publish books and in reality it is more for administrative classification reasons that there is a difference between the goods and services. In the market they are clearly similar. 1252/2001 NOVIA / NOVIA (fig) (EN) Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 228

229 Identity and likelihood of confusion: Similarity of goods and services See also 507/2002 FLEXITEL / T --- Flexitel (fig) (DE): printed matter (cl. 16) v publication and edition of certain manuals, brochures for teaching purposes (cl. 41), and LE MERIDIEN (fig) (cl. 16) / MERIDIANI (cl. 41) (EN) and NOVA (class 16) / NOVA (fig) (cl. 41) (EN) on similarity between printed matter and publication of printed matter due to the core business of publishing companies. - Further examples: Building materials and customer service with regard to the sale of buildings and building materials: similar 9/2001 JAM (cl. 19)(fig.) / JM (fig) (class 35)(EN) Fashion design services and fashion information services and clothing: similar 1522/1999 LILLYWHITES (fig.) cl.25 / LILLY (cl. 42) (EN) See also 2374/2001 CITY DESK (cl. 42) / citi (fig) (cl. 9) (EN), 1865/2001 VORTEC (fig) (cl. 9) / VARTEC (cl. 38) (EN).) 5.3. Services ancillary to goods, i.e. usually provided together with goods (or vice versa) Where services are ancillary to goods or where goods are ancillary to services - similarity is more difficult to establish because the public might believe that the manufacturer of the goods is not a genuine service company, or vice versa. A higher degree of similarity of the signs and / or an enhanced degree of distinctiveness of the earlier mark are needed to establish a likelihood of confusion Goods and services dissimilar Usual origin of goods and services is not the same Principle If the usual origin of the goods and services is not the same or that of an economically-linked enterprise, the goods and services are dissimilar Services of transport, packaging and storage of goods Services of transport, packaging and storage of goods have been considered not to be similar to goods in classes 9, 25, and 29, 32. These services are provided by specialist transport companies whose business is not the manufacture and sales of goods. Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 229

230 Identity and likelihood of confusion: Similarity of goods and services EN FRUTTAVIVA et al (cl. FRUTA VIVA JUVER 29,32) (cl. 39) EN CHIP SET (cl. 39) CHIP (fig) (cl. 9) EN EAR (fig) (cl. 9) EAR (fig) (cl. 37) EN RAINHA et al (fig.) (cl. REINA DECO (fig) (cl. 25) 39) EN SPORT AUTHORITY (cl. THE SPORTS 39) AUTHORITY (cl. 25) EN IKKS COMPANY et al. KKS (fig) (cl. 39) (cl. 25) EN IDE (fig) (cl. 39) / IDEM (cl. 9) However, similarity must be assumed between services of transport, packaging and storage of goods and, e.g., furniture. It is common for a furniture store to take care of the shipping, either by a fleet of vans of its own or by an associated transport company Other cases If the fact that the goods and services are offered together is merely incidental, as in the case of promotional material or gifts, the connection will not be strong enough. Thus, travel bags were found dissimilar to travel agency services. R 72/ (EN) affirming 964/1999 THE GREY LINE (cl.39) / GREYLINE (cl.18, 25, 28) (EN) (affirmed) Usual origin is the same but either good or service is not part of the core business When considering the similarity of goods and services it is important to take into account the core business of the undertakings providing the respective goods and services. For example, the core business of advertising agencies is to provide advertising services to other businesses. Even if the goods at issue may appear in the advertisements, this is insufficient for finding similarity, because the nature of advertising services is fundamentally different from the manufacture of goods. The same reasoning will apply in cases where the advertising services are compared with class 9 goods that can be used as a medium for disseminating advertising. 1621/2002 EUROHYPO / EUROPHYPO (EN) Furthermore, the fact that most undertakings rely on advertising or other promotional tools to stimulate business does nnot make these tools similar to the goods promoted. The reason is that companies engaged in promoting their goods do not usually offer promotion services to third parties Goods and services may be (remotely) similar Services provided in connection with goods Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 230

231 Identity and likelihood of confusion: Similarity of goods and services Installation, maintenance and repair services In the relation between goods and their installation, maintenance and repair, similarity of goods and services could be sustainable if it is common in the relevant market sector for the manufacturer of the goods to also provide such services. In such cases a finding of likelihood of confusion could be justified, especially if the signs are identical or very similar and/or the earlier mark enjoys a reputation. - class 9 goods Data processing installations and computers, and components therefor were found similar to installation and repair of electronic apparatuses EXPRESSO (cl. 37) / XPRESSO (fig) (cl 9) On relation between installation services and class 9 goods see also: LIS (cl. 9) / LIS (cl. 37) (EN), EAR (fig) (cl. 9) / EAR (fig) (cl. 37) (EN), ADCO (cl. 9) / ADCON (cl. 37) (EN) ), NOHMI (cl. 9) / NOMI (fig.) (cl. 37) (EN), 352/2002 CALIFORNIA (cl. 12) / CALIFORNIA EXCLUSIVE (cl. 37) (EN). 1671/2002 ACOME (fig) / ocom (EN) repair services and data processing equipment, computers: link found. - Installation, maintenance and repair of water purification apparatus and installations v water treatment apparatus and installations: similar 1800/2002 CRISTAL / CLASSIC CRYSTAL (fig)(en); another example for maintenance: 40/2002 CALL ONE / ALL ONE (EN). - For the relation between automobiles and parts thereof and motor vehicle maintenance and repair services see S-CLASS (cl. 12) / S TYPE (cl. 37) R 969/ (EN): similar. - Furniture and the installation of furniture: similar, 873/2002 space / space 2 (fig) (DE) - Weighing equipment; namely industrial weight display terminals for weighing scales cl. 9: It is common in the field of industrial equipment for it to be serviced and maintained by the manufacturer or a related company. Installation, preservation and repair services electronic apparatus are normally provided by the manufacturer of such very specific and delicate apparatus itself or by specialised companies which may refer to the trade mark of the producer if it is necessary to indicate the intended purpose of a service. Therefore, the goods and services are similar. See R 344/ LYNX / LYNX (fig) (EN). Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 231

232 Identity and likelihood of confusion: Similarity of goods and services Advisory services Advisory services, consultancy and the like are a further example where similarity between goods and services can be found under conditions similar to those concerning maintenance, installation and repair. 1800/2002 (EN): consulting, advisory, and information services relating to installation, maintenance and repair of water purification apparatus and installations v water treatment apparatus and installations. 1390/2001 (focus (fig.) / FOCUS) (cl. 7, 37) (FR) advisory services relating to the installation, maintenance and repair of machines v laser cutting machine Goods provided in connection with services In some cases similarity between the goods and services can be found when goods are essential for the provision of the service. Then a complementary relationship exists between the goods and services. Thus, the goods educational material are of central importance for education services and their strong connection was considered an indication of similarity. But see above, under b. 1207/1999 ILS (cl. 9, 16, 41) / ELS INTERNATIONAL (cl. 35, 41) (EN), affirmed R 75/ (EN) and, as for similarity of goods and services, affirmed by the CFI as well. See above Further example: Providing of travel information v audiotapes, videotapes, CDs, laser discs, films and motion pictures, computer software, and CD-ROM; magazines, books, newspapers, newsletters and other printed publications: Certain degree of similarity between these specific services and the goods which also encompass specific goods related to travel information because goods could be considered as specifically made for providing such information. 880/2001 TIME / TIM (fig) (EN) Restaurant services - foodstuffs There is an average degree of similarity where the foodstuffs are offered independent of restaurant services and are not merely ancillary to these services. Foodstuffs offered independently include finished meals that may be taken away ( for here or for to go? ) as well as certain processed or unprocessed types of food, such as confectionery, ice cream (processed) or meat (unprocessed) because confectioneries/bakeries, ice cream parlours and butcher s shops may also offer the consumption of their goods in an adjacent fast-food restaurant or café. On the other hand, merely ancillary goods are only remotely similar. Such ancillary goods include semi-processed food, such as jellies, jams; preserved and cooked fruits and vegetables, as well as certain drinks, such as coffee. The question as to whether a likelihood of confusion can be found will depend Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 232

233 Identity and likelihood of confusion: Similarity of goods and services on the other factors, in particular on the degree of similarity of signs and the degree of distinctiveness of the earlier mark. Finally, there is one category of foodstuffs that are not similar to restaurant services at all. This category includes certain basic or unprocessed kinds of food, such as eggs, flour, salt, as well as certain drinks, such as soft drinks. These goods are not similar to restaurant services because even if they are labelled with identical marks, the consumers will not believe that restaurants are in control of their manufacturing. The Third Board of Appeal found striking differences between services related to bars, restaurants and night clubs, as compared with syrups, beer, soft drinks and non-alcoholic drinks: The services are related to the provision of meals and drinks ready to be consumed and consist in preparing, cooking and offering the meals. They have nothing to do with the production and marketing of the food and drinks as such. Bars, restaurants and night clubs offer all kind of drinks bearing their respective signs, but in these places the client is not buying the bottle containing the beverage, but the service of having the drink prepared and served ready to be drunk in a specific ambience he considers comfortable and attractive. R 536/ & R 674/ NEGRA MODELO /MODELO (EN), pending before the CFI Sports activities and sports clothes Sports activities (cl. 41) and sports clothes, sports shoes (cl. 25), gymnastic and sporting articles (cl. 28) have been found similar because of manufacturers of goods sponsoring activities focusing on these goods. It should be noted, however, that sponsoring activities are only one and not the decisive criterion. Apart from that, these activities must be distinguished from merchandising. 638/2002 CARRERA / CARRERA (fig) (DE). Not followed: OD MERLIN / LEROY MERLIN (fig) Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 233

234 Identity and likelihood of confusion: Similarity of goods and services VI. SPECIFIC GOODS AND SERVICES COMPARED 1. IT/telco goods and services IT and telecommunications goods and services, i.e. typically goods and services included in classes 9 or 38, such as computers (cl. 9) or telecommunication services, are similar between them. Frequently opponents base oppositions on such goods and services arguing that they either form part of the contested goods or that the contested services are carried out using such goods or services. When IT/telco goods and services are compared to other services, it is not decisive whether such other services are performed using IT or telecommunications technology. Thus, searching services in the field of intellectual property are not similar to IT/telco services simply because computer databases may be used to make such a search. The nature of the services and their purpose (consumer needs met) are obviously different. Therefore consumers will not expect these services to originate from the same source as the IT/telco services which may be used in this context. They are therefore dissimilar. The mere fact that IT/telco goods or services are in some way connected to other goods or the performance of other services is not sufficient to allow for a finding of similarity. 1668/2000 T (device) (DE) (cl. 9, 16, 36, 38, 41, 42, etc.) / iti (device) (cl. 42), 2095/2001 pia (devices) (DE) (cl. 35, 41 and 42) / PIA (cl. 9, 35, 42). When telecommunications services are compared with goods promoted by using these services a distinction must be made between the telecommunications media and the content disseminated using these media. The business of a telecommunications operator is to transmit content but not to manufacture and sell the goods whose promotion is the subject matter of that content (e.g. cl. 3 goods, such as perfumes, in the case of an electronic mail service). Consequently, there will be no similarity between these services and goods SECRET PLEASURES (cl. 3) / PRIVATEPLEASURES.COM (cl. 38) (EN) Apparatus for the transmission or reproduction of sound or images (cl. 9) are not similar to education and training services. 996/2001 TELIA / TELENIA (EN) The detailed discussion which follows concerning the comparison of repair, maintenance et al. of motor land vehicles (cl. 37) and electronic databases (cl. 9) et al is in line with the above principles. Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 234

235 Identity and likelihood of confusion: Similarity of goods and services Electronic databases and technical documentation are not any more related to the vehicle industry than to any other product or service. The mere fact that the sale, rental or servicing of motor cars may involve the use of databases or the publication of catalogues or manuals cannot lead the public to believe that such goods and services have the same origin. Their nature is clearly distinct and even where goods and services are used in the sale, servicing and rental of motor vehicles, they remain ancillary to the main business activity. Moreover, operators in the vehicle industry usually commission the development of electronic tools and the publication of promotional and technical publications from companies specialised in the creative part. It follows that the goods and services are addressed to the industry itself, rather than the purchaser of the final product. Therefore, not only are the endusers thereof different, but they also operate at different levels of the market. Furthermore, it is self-evident that information technology and publishing applications are not in competition with the sale, servicing and rental of motor cars and that they are not offered through the same commercial channels. Even where the buyer of motor cars gets technical or promotional material as a complement of the main product, he is not interested in the entity that carried out the creative work, and he is not likely to confuse it with the manufacturer of the vehicle, in the same way that he is not going to confuse, for example, the publisher of a specialised car magazine with the manufacturer of the cars to which such a publication refers LEX et al. / LEX-COM (EN) 2. Similarity of retail services among themselves and of goods and retail services In Communication No 03/01 of the President of the Office of 12 March 2001 there is an express indication regarding the conflict that may arise between retail store services and the goods which are sold in these department stores. As regards conflicts between services and goods, the Office takes the view that, while a similarity between goods sold at retail and retail services cannot be denied in the abstract, the risk of confusion is unlikely between retail services on the one hand and particular goods on the other except in very particular circumstances, such as when the respective trade marks are identical or almost so and well-established in the market. Each case that arises will of course be dealt with on its own merits. As regards the similarity of goods or services, the following principles apply: First, retail services not limited in the specification to the sale of particular goods are not similar to all goods that are capable of being sold at retail. Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 235

236 Identity and likelihood of confusion: Similarity of goods and services Second, retail services related to the sale of particular goods are similar to these particular goods. Third, retail services related to the sale of particular goods and other goods are not similar. Fourth, retail services not limited in the specification to the sale of particular goods are similar to retail services related to the sale of specific goods. Fifth, the question whether retail services related to specific goods are similar to retail services related to other specific goods will depend on the degree of similarity between those goods. It must be emphasised that a finding of similarity of the services with goods does not lead to the conclusion that there exists likelihood of confusion. This will depend on the other factors. 3. Footwear, clothing, headgear, handbags, accessories 3.1. Footwear and clothing are similar Footwear, shoes and boots serve the same purpose, in principle, as the items of clothing listed: they are intended for wear by humans, both as protection from the elements and as articles of fashion and are, as such, found often in the same departments of large departmental stores and in the same retail outlets. Consumers, when seeking to purchase clothes, will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both. This is especially true of retail outlet chains or chain stores, which will often provide footwear and clothes under the same trade mark. See R 634/ a (fig) / a (fig) (EN). This decision confirms the OD s practice (e.g. 1866/2002 KE ELECTRONICS (fig) / KE (fig) (EN) for clothing footwear headgear). The Third Board of Appeal now shares this view in principle. See R0590/ B BOOMERANG / BOOMERANG (fig) (EN) and subsequently R0494/ JELLO SCHUHPARK / Schuhpark (CFI case) against its earlier, more restrictive decision in R 562/2000-3, WORKERS FOR FREEDOM / WORKER'S (EN)) Headgear and clothing are similar The goods headgear of the CTM application are of an identical or very similar nature as the goods clothing of the earlier mark, in particular as regards types of clothing which is supposed to give some protection against wind and rain. Furthermore, headgear is not only seen as a means for protecting the head against weather influences, but also as a fashion article which is supposed to match the outfit and, for this reason, is sometimes chosen as a complementary item to Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 236

237 Identity and likelihood of confusion: Similarity of goods and services clothing. Therefore, not only the end users, but also the purpose of the respective goods are identical in this regard. Moreover, the distribution channels of the respective goods are sometimes identical, and their sales outlets and departments are often either the same or at least closely connected. Taking all these factors into account, the goods headgear and clothing are considered similar to each other. 845/2000 M. Lorenzo (fig) / (fig) (EN) The word clothing covers a broad range of goods. A piece of cloth used as a wrapping around the body as a dress is a form of clothing. The same item can also be used as a shawl to cover the head or be transformed into a turban and then amounts to headgear. R 165/ ENIGMA ITALY / ENIGMA (fig) (FR) 3.3. Handbags and clothing are similar Handbags are likely to be considered as accessories to clothing. See above, under b Specific accessories to clothing In a case of absolute identity of the signs, goods in cl. 26 such as buttons, pressure buttons, buckles, eyelets, plates or rivets may give rise to likelihood of confusion if the earlier trade mark protects clothing and footwear in cl. 25 as those goods in cl. 26 are accessories to those of the earlier trade mark, and the applicant s trade mark may remain visible on the resulting garment or shoes. Even if the final product also bears another trade mark, there is no way of ensuring that consumers who see the final product in a shop do not attribute responsibility for the entire product to the opponent R 267/ ZANELLA / ZANELLA (IT) 4. Pharmaceuticals 4.1. Pharmaceuticals and pharmaceuticals Pharmaceuticals are generally considered to be highly similar to other pharmaceuticals, while the degree of similarity may be lower if the different pharmaceutical indications clearly differ. Several similarity criteria are usually met: Nature: specific chemical products. Purpose: broadly speaking, healing / curing. Distribution channels: in particular pharmacies. Usual origin: pharmaceutical industry manufacturing a wide variety of drugs with various therapeutic indications; consumers are aware of this. Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 237

238 Identity and likelihood of confusion: Similarity of goods and services 4.2. Pharmaceuticals and cosmetics In the OD s view, there is some similarity when comparing the general categories, but the similarity may be low. The Third Board of Appeal also considered pharmaceuticals and certain body care goods to be similar. See R 433/ TEI-FU / TAI-FUN. Body care products of the application, namely perfumes, colognes, cosmetics and deodorants can be manufactured by the same or similar company which produces medicines or pharmaceuticals. Although medicated goods are usually manufactured by pharmaceutical companies, it is a matter of fact that nowadays companies whose core business is body care protection produce both medical and non-medical products. Besides, the sale outlets and the distribution channels of the goods in dispute are sometimes the same (for example pharmacies where non-medical products are also sold and perfumeries where medical goods are marketed). In contrast, the First Board of Appeal held sanitary products and cosmetics to be dissimilar to pharmaceuticals: Sanitary products, cosmetics and perfumes are dissimilar since both the method of use and the relevant consumers to which they are addressed are different. Additionally, most of the time they are also sold in different stores. Sanitary products, cosmetics and perfumes are available for purchase in grocery stores, supermarkets or perfumeries while pharmaceutical products are only available in pharmacies. In the case that they are sold in the same outlet, they would be placed on different shelves. R 0984/ Gry / GRY (EN) When comparing specific pharmaceuticals they may be entirely dissimilar with cosmetics in general or specific cosmetics. In some cases, specific pharmaceuticals and specific cosmetics were found to be similar: Pharmaceutical preparations for treating medical conditions of the skin or of the hair can take the form of creams or lotions. Both sets of goods have the same method of use as cosmetics, which also include creams and lotions. 1981/2002 VITANOV / Nova Vita (fig) (EN) Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 238

239 Identity and likelihood of confusion: Similarity of goods and services VII. INTERRELATION OF FACTORS 1. Predominant Factors The particularities of each case may also suggest that a particular factor is predominant. As stated above, there are factors that are more or less important, depending on the facts of the case. Hence, the evaluation of the various factors in the comparison of goods should take account of their respective importance for the specific case. In other words, the various factors do not have a standard value for all cases, but rather their specific importance should be determined in the context of each individual case. In general, the weight of each factor will depend on the impact it has on the origin of the goods in question. Factors clearly suggesting that the goods/services (products) come or do not come from the same undertaking or economically linked undertakings should take precedence over factors that only have a secondary bearing. R 433/ Arthur (fig.) / Arthur (fig) (EN), R 0232/ S ORLANDO (cl 29, 30) / Orlando (cl 31)(EN), 199/2000 Three Stars / Three Stars (EN). In assessing the similarity of products all relevant factors characterising the relationship between the goods and services should be taken into account. Generally strong factors are - the purpose - strongest factor, - the nature from a commercial point of view. Conversely, factors generally less important because they do not often characterise that relationship are: - the method of use: many different goods can be used in the same manner: e.g. both pharmaceuticals and food/drink are consumed orally, but they are not similar. Both baby carriages and shopping trolleys are moved in the same way, and yet they are not similar. - the distribution channels: the sales outlets are a weak factor in general, unless specialised stores or the same sections of supermarkets are concerned. - the relevant public: the mere fact that the customers overlap is not an indication of similarity. The same customers may be in need of goods and services of the most divergent nature and origin. However, divergent distribution channels and/or a minimal overlap of the relevant public strongly weigh against similarity. Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 239

240 Identity and likelihood of confusion: Similarity of goods and services 2. Interdependence of factors Occasionally, a factor will be useful not only for the direct impact it may have on the similarity of goods and services, but also because it may serve as an indication that another factor is important or pertinent to a greater or lesser extent. This is especially true for all those secondary circumstances and indications taken into account in the presentation of each specific factor above. Such indications, alone or combined, may show whether and to what extent a particular factor is applicable in each case or may serve to define its scope. For example, the purpose (intended use) of the goods reveals their customers; the purpose of the goods in combination with their price may determine if such goods are in competition with each other; the place of production and method of manufacture may point in the direction of origin from the same or economically-linked undertakings etc. R 0818/ Grand Trianon / Trianon (FR) But there are no strict rules. As stated, if the purpose of the goods is the same and their (properly calculated) price is similar, they will often be in competition, e.g. coffee filters made of paper and coffee filters made of metal. However, this is not inevitable, as the example cinema and bowling services shows. Therefore, the similarity factors above have been discussed separately. The examiner must assess them in their totality at the end of the similarity of goods/services analysis to determine the overall degree of similarity. Furthermore, the value of the various factors may differ widely, depending on the case: - In one case the nature may be similar, but the distribution may be very different. Even if the same or very similar characteristics of goods (i.e. nature) would make it easy for an undertaking to produce other goods, it might choose not do so if it faced great difficulties in finding a way to the customers. Example: window glass glass for spectacles. - Conversely, the nature, i.e. product characteristics, might be totally different, e.g. plastic wood glass, and require different production equipment (or economic links with other companies), but if the product design, and the purpose of use is the same as well as the the distribution, both types of goods might still be manufactured under the control of the same undertaking. Example: For certain toys it is of secondary importance whether they are of plush, cardboard, wood, metal, or other materials (save where certain safety standards must be met for young children). What is important for Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 240

241 Identity and likelihood of confusion: Similarity of goods and services the customers is an attractive shape. JAKO-O (fig.) / JOCKO 2628/2001 (DE) (reversed on other grounds). See above, under (iv). Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 241

242 Identity and likelihood of confusion: Similarity of goods and services VIII. CONCLUSION The Court stressed in Canon that if it appears that the public is not of the opinion that the goods and services come from the same undertaking or from economically linked undertakings, there can be no likelihood of confusion. Therefore, if after a balanced assessment of the various factors it does not seem likely that the public will attribute the same origin to the compared goods and services, those goods and services must be considered dissimilar. However, before such a conclusion may be reached, account must be taken of the principle that in assessing the likelihood of confusion, all factors are relevant and interrelated. Consequently, the examination may be closed due to a dissimilarity of the goods at issue only if the same conclusion would have been reached even if the signs were identical and the earlier mark was highly distinctive. This has to be expressly mentioned in the decision. For example, beer was held to be sufficiently dissimilar to electronics for the examination to be concluded without any comparison of signs, as were art exhibitions to clothing. 353/1999 POLAR (cl.32) / POLAR (cl.9) (EN), 904/1999 BOULEVARD (cl.25) / Bvd. PEDRALBES (cl.41) (EN), 2618/2001 Diane (cl. 5) / Diana (cl. 3, 5) (EN), 1531/2001 Lloyd s (cl. 18, 25) / Euro Lloyds (cl. 36) (ES). Conversely, if the overlap found suggests that the public may think that the goods and services concerned come from the same or economically-linked undertakings, a conclusion may be drawn as to the degree of similarity between the goods and services, and the examination continues. As stated (above, under IV ), such a conclusion must in any case be drawn, no matter whether at the end of the similarity-of-goods analysis or in the final likelihood-of-confusion analysis Blû (cl 33) / BLU (cl 32) (EN). Opposition Guidelines Part 2 Chapter 2B - Status: March 2004 Page 242

243 OPPOSITION GUIDELINES Part 2 Chapter 2: Likelihood of confusion C. Similarity of signs Opposition Guidelines Part 2 Chapter 2C, Status: March 2004 Page 243

244 INDEX CHAPTER 2: LIKELIHOOD OF CONFUSION C. SIMILARITY OF SIGNS I. SIMILARITY OF SIGNS Principles underlying the comparison Overall impression Distinctive and dominant components Assessment of the overall impression Visual, phonetic and conceptual comparison General principles Visual comparison: practical criteria Phonetic comparison: practical criteria Conceptual comparison: practical criteria Particular issues as regards different kinds of signs Number of letters and structure Length of signs Beginning of signs Sequence of syllables, rhythm and intonation Composite signs signs that are partly or wholly included in the other sign Signs containing figurative and word components Multi-part word signs Predominant character of the common component Distinctiveness of the earlier sign Names (Business) names in combination with other components First and family names II. CONCLUSION ON SIMILARITY OF SIGNS Opposition Guidelines Part 2 Chapter 2C, Status: March 2004 Page 244

245 Identity and likelihood of confusion: Similarity of signs CHAPTER 2: LIKELIHOOD OF CONFUSION C. SIMILARITY OF SIGNS I. SIMILARITY OF SIGNS 1. Principles underlying the comparison The same basic principles explained above under subpoint II. 1 for the similarity of goods and services apply to the evaluation of similarity of signs. Hence, the similarity of signs - is a conditio sine qua non for a finding of likelihood of confusion; - must be evaluated in view of the likelihood of confusion, that is in view of the conflicting marks being capable of suggesting that the goods or services have their origin in the same or economicallylinked undertakings; When assessing the similarity of signs, the signs have to be compared in the form they enjoy protection. That means that earlier registered marks and contested CTM applications only have to be assessed in their registered/applied for form. The actual or possible use of the registered marks in another form is irrelevant for the comparison of signs. For the effect of disclaimers, see IV. 2. below. The assessment of similarity must be carried out in relation to the respective territory where the earlier mark is protected. Where the earlier mark is a national mark, the relevant criteria must be analysed in relation to the relevant public in that particular country. Thus, the similarity may be different from country to country because of differences in meaning and pronunciation. When the earlier mark is a CTM application or registration, the analysis must extend to whole Community, and presence of similarity in one part of it will suffice. 2. Overall impression 2.1. Distinctive and dominant components The Court stated in Sabel that the global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (Sabel, paragraph 23). It should be pointed out that in that case the conflicting marks consisted of a leaping wild animal as the earlier mark and a similar animal together with the word SABEL in the later mark. Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 245

246 Identity and likelihood of confusion: Similarity of signs This finding of the Court establishes the two following basic principles: - the assessment of similarity of signs must not only be based on some isolated elements, but on the global appreciation of both signs under comparison; - the distinctive and dominant components are in particular important for the evaluation of similarity between signs. The Court has used the concept of distinctive and dominant components in a general manner and without any further specification. It is however obvious that the assessment of the elements forming the sign requires an agreement as to the criteria that will be used to identify the distinctive and the dominant elements. The notions of distinctive and dominant describe the well-known phenomenon that signs, unless they are unitary (such as single word, a single figure, a single colour), are perceived in normal life by focussing on the dominant element, that which distinguishes the sign. At a next level of analysis, beyond the mere visual perception, judgement is involved, and it is here that distinctive obtains is additional value as a tool: signs or elements of signs which have no distinctiveness in the legal sense, i.e. are descriptive, generic or for other reasons non-distinctive for the goods or services involved, will be largely or totally disregarding when determining similarity in the legal sense, however much they may, as a matter of mere perception, dominate the sign. The perception of what is dominant or distinctive will also vary depending on whether the analysis centers on visual, oral or conceptual similarities Assessment of the overall impression The assessment of the similarity of the signs is based on the fact that the relevant public does not tend to analyse a sign in detail when confronted by it. The public, however, pays more attention to the distinctive and dominant components of signs. This may be a merely unconscious reflex, since the eye focuses on the distinctive and dominant components more readily than on the less distinctive components. Consumers may, however, consciously focus on the more distinctive components of a sign in order to differentiate it more easily from the marks already known in the relevant market. Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 246

247 Identity and likelihood of confusion: Similarity of signs Furthermore, the differentiation between different components of signs takes account of the fact that consumers, in general, do not have both signs in front of them at the time of being confronted with either of them, such as in advertising, or when purchasing certain goods or services. When confronted with a sign, they rather compare it with their recollection of signs already known for the relevant area of goods and services. However, consumers do not clearly recollect all the details of the signs, but rather their more distinctive and dominant components. The sign at hand and the imperfect recollection of another sign are the basis on which consumers evaluate whether the respective signs are the same or similar ones or not (see Lloyd, paragraph 26). Experience shows that similarities of signs are more significant than dissimilarities for the outcome of this evaluation. Therefore, comparison of signs will always have to take into account whether some components are more distinctive and dominant than others are. This applies to both signs under comparison. The pertinent criteria are not only those applied when evaluating the overall distinctiveness of the sign (see subpoint IV.2.), but also other factors, such as a different graphical presentation or a different size of the various components. However, the Court left open the question of what is to be regarded as a component of signs. This cannot depend on whether a sign is visually divided into different parts. Rather the perception of the sign by the relevant public is decisive. The relevant public often regards one-word-signs as composed of different elements, in particular, in cases where a part has a clear and evident meaning whereas the rest is meaningless, or where there are visual indications such as a dash or the use of different type sizes and / or typefaces. In such cases, the elements of one-word-signs could be regarded as components as mentioned by the Court. 101/1998 FR ÖKOVITAL VITAL No LoC 188/1999 EN ACTILINE ACTIVIN No LoC 268/1999 EN GOLDSHIELD SHIELD No LoC 1449/1999 EN COLORSPERSE AROSPERSE LoC 10/2000 EN STAR PetSTAR No LoC 2558/2000 EN FEMINEX FEMIPRES No LoC 1713/2000 EN MAXDATA TRAXDATA No LoC 2543/2001 EN NEVADENT NEODENT No LoC 2895/2001 EN POSTEX POSTECS No LoC 674/2001 EN BRANDSHAPE BRANDCAST No LoC However, it is not appropriate to split up a sign artificially, that is, in those cases where it is not likely that the public will perceive the sign as composed of different elements. In this evaluation, it should be taken into account that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 247

248 Identity and likelihood of confusion: Similarity of signs 44/1999 EN TELIA teeli LoC 911/1999 EN VICO VICOUNT No LoC 1450/1999 EN SUN SUNNYLINE No LoC 1503/1999 EN SANIT VASANIT No LoC 813/1999 confirmed by BoA Dec /1999 confirmed by BoA Dec. 292/ EN ATLANTIC PAPETERIES DE L ATLANTIQUE No LoC EN TARAFORTE TARKA No LoC 1476/1999 EN GENOTROPIN GRANDITROPIN No LoC Less distinctive or dominant parts always have to be taken into account when evaluating the similarity of signs. The Court made clear that the comparison of the marks has to be based on their overall impression. The less distinctive components have some influence on this as well. These components are of less importance in this respect than the distinctive and dominant ones. Nevertheless, they may be the factors which tip the balance in the evaluation of similarity. 355/1999 (EN) CAMOMILA INTEA / INTESA, (No LoC) confirmed by BoA Dec. 499/ (The case is pending before the CFI) It is also important to note that in certain cases the combination of two words which are descriptive per se may nevertheless have a certain degree of distinctiveness, since the distinctive character may lie in the combination of the words. 1756/2000 (EN) EUROBAIT / EUROBAITS (LoC); 1267/2001 (EN) MOVICOM / MOBILCOM (LoC; pending in BoA). When assessing and comparing the distinctiveness and dominance of the various components of signs, it is necessary to distinguish the relevant territory, since, mainly due to linguistic reasons, the perception of signs may be different. 758/1999 confirmed by BoA R728/ and 792/ pending in the ECJ 1982/2000 confirmed by BoA R1045/2000-2, pending in the EN MATRATZEN MATRATZEN CONCORD EN MATRATZEN MATRATZEN CONCORD CFI 248/2000 EN ACTIVE WEAR INTERACTIVE WEAR LoC LoC LoC Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 248

249 Identity and likelihood of confusion: Similarity of signs 1457/1999 EN MEGAKID MEGARIG No LoC 377/2000 EN CALCITRANS CALCITUMS No LoC Furthermore, it is necessary to distinguish between the different goods and services involved, as the finding of a descriptive meaning of a component could affect only part of the goods. To this extent the same considerations are pertinent as in the determination of the distinctiveness of the earlier sign as such (see subpoint IV.2. below). 3. Visual, phonetic and conceptual comparison 3.1. General principles As stated by the Court in Sabel, the similarity of the signs has to be appreciated globally, i.e. including a visual, aural and conceptual assessment (Sabel, paragraph 23). Therefore, it is never appropriate to assess the similarity of signs only in some of these aspects. The similarity between signs always has to be evaluated with respect to their visual, aural and conceptual aspects. However, this does not mean that a finding of likelihood of confusion is only given in cases where similarity of the signs can be found in all the aspects mentioned. On the contrary, the Court clarified that a mere aural similarity between trade marks may create a likelihood of confusion, depending on the further circumstances of the case (Lloyd, paragraph 28). The mere aural similarity between marks has been found sufficient, according to the particular circumstances of the case, to establish likelihood of confusion when the goods or services involved are recommended or ordered orally, such as clothes. (See section B. I (b)). 851/1999 EN FIFTIES MISS FIFTIES LoC confirmed by CFI 309/1999 DE WOOKI WALKI LoC 1949/2001 DE HZ Hazet LoC 2032/2000 EN OLLY GAN HOOLIGAN LoC; reversed by BoA R1072/ /2000 EN COPAT QPAT LoC 1593/2001 EN INCELL LINCEL LoC According to the Court, it is possible that a mere conceptual similarity, resulting from the fact that two marks use images with analogous semantic content, may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public (Sabel, paragraph 24). Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 249

250 Identity and likelihood of confusion: Similarity of signs Likewise, a mere visual similarity between the signs may suffice, according to the particular circumstances of the case, for a finding of likelihood of confusion (in this respect, see also following section 3.3). 113/1998 (EN) SUNRISE / SUNSET, confirmed by BoA 109/ (LoC); 482/1999 (EN) MASTER CADENA / CHAIN MASTER (LoC); 1499/2000 (EN) / (LoC). However, the finding of likelihood of confusion always depends on the specific circumstances of each individual case. All the circumstances have to be carefully assessed and weighted. It is always necessary to consider all aspects of similarity together in order to determine the outcome. Additionally, it may be decisive that one aspect of similarity is of specific importance in respect of the goods and services involved (see subpoint IV.4. below). Taking all these considerations into account, even a weak similarity in all the different aspects (visual, phonetic and conceptual) may, when considered together, lead to a finding of likelihood of confusion. On the other hand, a strong difference between the signs in respect of only one of the different aspects may lead to a finding that confusion is not likely, in spite of the similarity found in respect of the other aspect(s). As regards cases where the key difference lies in the visual element, it should be noted that there is a need to acknowledge a strong visual difference between the signs. 1233/2001 (EN) / (No LoC); 1039/2000 (EN) / (the remarkable visual differences prevail over the similarity of the word part; No LoC). Moreover, as regards cases where the key difference lies in the concept, it is necessary that the difference is sufficiently remarkable. This implies that the conceptual meaning of the relevant signs has to be clearly understood by the relevant consumers. BoA R-0048/200-3 MARCO / MARCA, reversing Decision 1279/1999 where the importance of the conceptual difference was overestimated, as it was considered that German consumers would understand marca as meaning Marke. In most of the cases where a clear conceptual difference is acknowledged, it is because both trade marks convey very different messages. Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 250

251 Identity and likelihood of confusion: Similarity of signs 286/1999 EN MOUNTAIN MOUNTAIN BIKER No LoC 651/1999 EN BIG DEAL D.E.A.L. No LoC 873/1999 EN ALTA ALTA FIDELIDAD No LoC 960/1999 EN GUESS? GLISS No LoC 1443/1999 EN METRO MAESTRO No LoC 167/2000 DE Mixery MYSTERY No LoC pending in CFI 490/1999 FR PELLET PELE No LoC 256/2000 EN GOLDMARK GOLD BLOCK No LoC In some particular cases it may even be that a strong and clear conceptual meaning of one of the signs under comparison is to be regarded as sufficient to avoid likelihood of confusion. However, this approach is to be only applied in special circumstances. Such circumstances could be given, in particular, where the meaning of the sign has a very strong impact on its overall impression. 1175/1999 EN NEPAL HEPAL No LoC 1316/1999 EN ODOL IDOLE No LoC 109/1998 EN Da Marco MAGOR No LoC 309/1999 DE WALKIE WOOKI LoC 1044/1999 EN ADVANTAGE ADVANTA No LoC 1045/1999 EN EASTPOLE EASTPAK No LoC 1208/1999, pending in CFI EN ILS ELS No LoC When evaluating whether a strong visual or conceptual difference between the signs may be sufficient for a finding that confusion is unlikely, the following should be considered: First, such a finding is only possible under the condition that the relevant public is able to perceive the visual or conceptual difference. 1233/2001 (EN) / (No LoC). In this context it has to be taken into account that visual or conceptual differences are sometimes totally imperceptible to the relevant public when the signs are communicated orally. If this is the case, the effect of the phonetic similarity on the finding of likelihood of confusion cannot be regarded as limited by the visual or conceptual differences. 64/1998 (ES) SSI STAR SERVICES INTERNATIONAL / SSI USA (LoC); 309/1999 (DE) WOOKI / WALKI (LoC), confirmed by BoA, R 429/ Secondly, such a finding of no likelihood of confusion further requires that the conceptual difference exist in all the geographical areas that are relevant when comparing the signs. Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 251

252 Identity and likelihood of confusion: Similarity of signs 611/1999 (EN) VERITÈ / VERI (LoC); 1280/1999 (EN) MANFIELD / PENFIELD (No LoC), confirmed by BoA 120/ If a significant part of the relevant public is not able to understand the meaning of the sign, the conceptual differences will not lead to a finding of likelihood of confusion Visual comparison: practical criteria The visual comparison is obviously decisive as regards figurative signs. However, it may also play an important role when comparing word marks. Not only the number of the letters is relevant in this context, but also the number of words and the structure of the signs. Further particularities may be of relevance, such as the existence of special letters or accents that may be perceived as an indication of a specific language. It should be noted that in the case of word signs, the word as such is protected and not its written form. Therefore, it is irrelevant whether word marks are represented in small or capital letters. The same applies to different letter-types, at least insofar as they are common in the relevant market. 31/1999 (DE) Landana / LANDAMANN (LoC); 62/1998 (EN) Cash Guard / CASHGUARD (LoC). As regards colour signs, the use of the same colour or colour pattern is an argument in favour of finding visual similarity. The exact effect of colours or colour patterns has to be assessed individually in each case, since this depends very much on the impact of the colour on the overall impression of the signs involved. 41/1998 (EN) / (fig.) (No LoC); 1019/1999 (ES) /TPS CALL SCIENCES (LoC); 1159/1999 (EN) EUROPA/ (LoC); In the comparison between three-dimensional signs and two-dimensional signs the same basic principles are to be applied. Of course the particular features of the three-dimensional sign may have a special influence usually on the visual impact of the sign. However, this must be considered in respect of the overall impression as usual. 2567/2000 (EN) / ( LoC); Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 252

253 Identity and likelihood of confusion: Similarity of signs or 41/1999 (ES) (considered as 3D device) / (considered as a 2D device) (No LoC); As regards the comparison between three dimensional signs, a comparison between the same devices as in case 41/1999 (cones) but this time assuming both are 3D can also be seen in decision 787/2001. This decision was adopted following the decision of the Boards of Appeal in case 41/1999 that made the OD accept that the CTM application is not a 2D drawing but just different views of a three dimensional device (BoA R- 174/ and subsequent decision of OD 787/2001). In this case, as both are 3D signs, it was held that they produced a similar impression overall. In the decision, on the one hand, the device was considered original in relation to the relevant goods (snacks) and, on the other hand, the simplicity of the devices was also taken into consideration (cones or similar are generated by a rotation in space of a triangles, one of the simplest 2D figures; LoC) Phonetic comparison: practical criteria The opposition may be based on earlier signs which enjoy protection in different Member States. In such cases the different pronunciations and intonations of the signs in all the relevant areas are to be taken into account. In principle, when word-only signs are involved, the aural impression will be of greater relevance than the visual impression. Word only signs could be written using different combinations of letters that, nevertheless are pronounced very similarly or identically. 1197/1999 (EN) KÄMPGEN / CAMPERS (LoC); 1280/1999 (EN) MANFIELD / PENFIELD (No LoC); 194/2000 (EN) eldou / VEL DOUX (LoC); 2895/2001(EN) POSTEX / POSTECS (LoC). When a sign contains foreign words, it is possible that a significant part of the relevant public is unfamiliar with the foreign language of the specific foreign words used. In this case consumers would pronounce the words in accordance with the phonetic rules of their native language. 1280/1999 (EN) MANFIELD / PENFIELD (No LoC); 146/2000 (EN) BRIDGE / OXBRIDGE (LoC); 2032/2000 (EN) OLLY GAN / HOOLIGAN (LoC; pending before CFI). In cases where a significant part of the relevant public pronounces the foreign word correctly, but another significant part of the relevant public applies the rules of their mother tongue, both ways of pronunciation have to be taken into account when assessing the phonetic similarity of the signs. Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 253

254 Identity and likelihood of confusion: Similarity of signs 309/1999 (DE) WOOKI / WALKIE (LoC). The aural similarity between the marks may be offset by conceptual or visual differences. 1158/2000 DERMO BABY / THERMOBABY (No LoC). As far as purely figurative marks are concerned, it is, in principle, not possible to make a phonetic comparison. A phonetic comparison could only be possible in cases where, either because of the direct and unequivocal term suggested by the sign or, mostly, because the owner of the trade mark has taught consumers (through advertising, promotion, etc) that his trade mark is to be pronounced in a particular way. Such cases occur where the parties have managed to prove that the mark can be referred to orally either because of a training of consumers or because there is no possible alternative way of referring to the device. An example of the first case could be a device of a bag with a question mark that is insistently advertised as the trade mark of the mystery bag. It also has to be taken into consideration that possible names also depend on the different relevant languages. Therefore, these cases are not particularly frequent and depend mostly on the evidence submitted by the parties to support the argument of the phonetic aspect of the figurative sign Conceptual comparison: practical criteria The signs are conceptually identical or similar when the public perceives the two signs as having the same or a similar semantic content. Conceptual similarity is also possible between word signs in different languages or between word and figurative signs. It is sufficient that the perception of a common meaning of the signs is shared by a significant part of the relevant public. This evaluation has to be carried out as regards (each of) the relevant area(s). 131/1999 EN CINCO 5 OCEANS LoC OCEANOS 348/1999 EN LINDENER LINDEBOOM LoC confirmed by BoA 380/ /1999 EN NUTRIFORM NUTRAFERM LoC 482/1999 EN CHAIN MASTER MASTER Cadena LoC 758/1999, EN MATRATZEN LoC 1191/1999 EN RIPOLIN Rentolin No LoC 182/2000 EN LIMMIT NO LIMITS LoC 3111/2000 EN RED BARON BARON ROJO LoC 1917/2000 ES MAJORICA MINORICA LoC 2962/2001 EN OPERATION SOURIRE OPERATION SMILE LoC Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 254

255 Identity and likelihood of confusion: Similarity of signs When signs are in a foreign language, a significant part of the relevant public may only have a limited command of the relevant foreign language and therefore might not be able to distinguish the subtle differences between the meaning of two signs. Already the perception of their meaning by the public may be then to some extent blurred. This further influences their recollection which will be less clear and less exact than the recollection of meanings originally perceived in the native language. 113/1998 (EN) SUNRISE / SUNSET (LoC); 495/1999 (EN) SECRET PLEASURES / PRIVATE PLEASURES (LoC), confirmed by BoA 616/1999-1; 2432/2001 (ES) BILBAO BLUE / BILBAO (LoC; BoA, CTM partially accepted The outcome may be different in cases where one of the two signs is written in the native language of the relevant public. The perfect understanding of its meaning and, therefore, its better recollection may enable the relevant public to perceive the differences in the meaning of the signs. 1121/1999 (EN) DAS GOLDENE BLATT / GOLDEN PAGES (LoC) As regards figurative signs, the Court has stated that the more distinctive the earlier mark, the greater will be the likelihood of confusion. It is therefore not impossible that the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public (Sabel, paragraph 24). Therefore, the underlying conceptual similarity in such cases is usually not sufficient for a finding of confusion unless the earlier trade mark is particularly distinctive. This means that some differences in the depiction representation of common elements and symbols may suffice to exclude likelihood of confusion, even if the underlying concept is not altered. 41/1998 ES No LoC 641/199 EN No LoC 696/1999 DE No LoC 1368/1999 EN No LoC 165/2000 EN No LoC 1447/2000 DE No LoC Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 255

256 Identity and likelihood of confusion: Similarity of signs The outcome may be different when the common figurative element is distinctive for the relevant goods/services or when the depiction of the earlier sign has acquired some distinctiveness through use (see previous section 3). 3006/2000 (EN) / ( deer s head for classes LoC Pending in BoA) 1449/2000 (EN) and / (LoC). The difference in the meaning of the signs may be an argument against the finding of a likelihood of confusion. This requires that all the significant parts of the relevant public perceive the different meaning of the signs. 286/1999 EN MOUNTAIN MOUNTAIN BIKER No LoC 611/1999 EN VERITÈ VERI LoC 873/1999 EN ALTA ALTA FIDELIDAD No LoC 1279/1999 EN No LoC 870/2000 EN PLANET No LoC 276/2001 EN PLANET MIKADO PLANET No LoC In cases where a significant part of the relevant public, in particular due to linguistic reasons, does not understand the different meaning of the signs, the likelihood of confusion is not diminished in the respective territory (see subpoint 2. above). 2920/2001 (EN) / SELENIUM-ACE (LoC). It may not be sufficient for a finding of confusion if only one component of the signs has a common meaning for the relevant public. In such cases it should be evaluated whether the meaning of the common component is strong enough to establish that the relevant public will assign this particular meaning to the whole sign. In this context, it should be taken into account that the relevant public does not tend to analyse the various parts of a sign. 55/1998 IT UNCLE UNCLE BEN S No LoC WILLIAM 359/1999 EN KINGSTON S KINGSTON ESTATE LoC 1424/1999 EN VIFIT VIVITA No LoC 1784/2001 EN TEQUILA No LoC Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 256

257 Identity and likelihood of confusion: Similarity of signs The consequence of a finding of conceptual similarity for the evaluation of likelihood of confusion depends on its strength and on the further circumstances of the case. The conceptual similarity has less weight in the evaluation of likelihood of confusion when the meaning of the signs clearly alludes to the respective goods and services or is common in the relevant market. 66/1999 EN DINOKIDS DINO No LoC 1043/1999 EN NEOLUX NEOLITE No LoC 1159/1999 EN EUROPA / T Europa No LoC 763/2000 EN XXL XL(device) No LoC 1139/2000 EN SILBERQUELL SILVER SPRING No LoC E CLEAR 937/2001 EN VITAL PHYTO-VITAL No LoC As regards the conceptual aspect involved in the comparison of purely figurative trade marks, again it is a matter of assessing the particular factual circumstances of the case. The exercise is a bit easier than the consideration of the aural aspect of such signs (see preceding point 3.3), as it is necessary to consider whether a common concept can be immediately perceived in the signs. In essence, all the considerations as regards the owner having trained the public to associate a sign with a particular concept are also applicable. In the following decisions, the visual similarities were the only relevant element to consider as there was no possibility of a identifying an aural element in either trade mark and only the second decision permitted to additionally identify the intellectual link of a board game. 146/1999 (EN) /; (LoC); 1202/2000 (EN) / (LoC). 4. Particular issues as regards different kinds of signs The following criteria have been developed and applied in a multitude of cases, in particular in the comparison of word signs. However, it should be stressed that these criteria are neither exhaustive nor applicable in all cases. Depending on the special circumstances of each individual case, different criteria may be pertinent Number of letters and structure Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 257

258 Identity and likelihood of confusion: Similarity of signs The overall visual impression produced by verbal or predominantly verbal signs depends to a great extent on the number of letters and the structure of the words. However, the average consumer normally perceives a sign as a whole and does not proceed to analyse its various details. Therefore, small differences in the (number of) letters are often not sufficient to exclude a finding of visual similarity, particularly when the signs have a common structure. 291/1999 EN SUVIMAX SULINAX LoC 444/1999 EN Sedonium PREDONIUM LoC BoA/CFI (settled) 469/1999 EN CODEROL CODIDOL LoC confirmed by BoA R 622/ /1999 EN NUTRIFORM NUTRAFER LoC M 852/1999 EN EVERGREEN EVERDEEN LoC 2044/2000 EN RESVIN RESVERIN LoC 727/2001 EN GERALDINO GHERARDIN LoC I 1917/2000 EN MAJORICA MINORICA LoC 2694/2001 EN FORTIS FORIS LoC, confirmed BoA R 0049 / Length of signs The length of the signs may influence the effect of differences between the signs. The shorter a sign, the more easily the public is able to perceive all its single elements. Thus, small differences may frequently lead in short words to a different overall impression. In contrast, the public is less aware of differences between long signs. In many relevant markets it is a common practice to use short marks which are abbreviations of the name of the company or refer to the relevant goods or services. In these cases the public is aware of this practice and is generally used to distinguishing between many abbreviations and will not be easily confused. 1316/1999 EN ODOL IDOLE No LoC 651/2001 EN YSL SL No LoC 838/2001 EN No LoC 1038/2001 EN TOM DOM No LoC Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 258

259 Identity and likelihood of confusion: Similarity of signs There is the tendency to deny similarity between one-letter-signs / onenumeral-signs which are depicted in a different and imaginative style. In fact, a single letter per se is generally devoid of distinctive character and does not, in principle, serve in trade to distinguish the goods of one undertaking from those of other undertakings. Therefore, for one-letter / numeral marks, the protection is sought for the specific manner in which the letters are represented graphically and not for the single letter by itself. For this very same reason, its aural and its conceptual impression will necessarily be identical but irrelevant to the overall impression of the sign. This implies that, for instance, if the marks in conflict consist in different graphic representations of the same letter, there will normally be no LoC. 10/1999 EN No LoC 122/1999 EN No LoC 394/1999 EN No LoC 468/2001 EN No LoC 1850/2001 EN No LoC 1631/2000 FR No LoC Nevertheless, these signs accompanied by similar figurative elements can be similar: 570/2000 (EN) / (LoC); 1087/2001 (EN) / (LoC). It is necessary to clarify that a verbal representation of one-letter / one digit signs is not to be considered equivalent to the sign and that, therefore, the aforementioned arguments are not directly applicable to such cases. For example, a fancy representation of number one is not the same sign as the word trade mark ONE. As regards trade marks built as two letter / two digit signs, it should be noted that similarity has been denied when they are compared to trade marks with different or more letters, also on the grounds of their reduced intrinsic distinctiveness. 596/1999 (EN) PC / BC (No LoC); 337/1999 (EN) NTS / NT (No LoC); 623/1999 (ES) EO / EOS (No LoC); 1244/1999 (EN) ATS / at (No LoC); Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 259

260 Identity and likelihood of confusion: Similarity of signs Finally, special considerations such as the representation of those letters in a peculiar form can lead to likelihood of confusion: 649/2000 (EN) / (LoC). To continue with the analysis of the signs that are considered weakly distinctive because of their reduced number of letters or figures, a further step towards the increase of distinctiveness would be that of three-letter / threenumeral- signs. In such cases, there seems to be a tendency to regard the signs as similar where the only difference lies in one phonetically similar letter. The following were found similar: 52/1999 (EN) ILC / ILS (LoC); 771/1999 (EN) Aok / Ayk (LoC); 869/1999 (EN) kza / KSA (LoC); 1536/1999 (EN) SYM / SIM ((LoC). In contrast, the following were found dissimilar: 168/1999 (EN) jbs / TBS (No LoC); 909/2001 (EN) BRU / BLU (No LoC); 125/2001 (EN) TPS / PTS (No LoC). However, in this context it should also be noted that there is no set approach. Each case has to be judged on its own merits, i.e. by taking into account all its specific circumstances Beginning of signs In predominantly verbal trade marks, the first part is generally the one that primarily catches the consumer s attention and therefore will be remembered more clearly than the rest of the sign. This means that, in such cases, the beginning of a sign has a significant influence on the general impression given by the mark and may often be capable of excluding similarity. Nevertheless, it has to be borne in mind that the concept beginning of the sign is undetermined, as there is no particular indication of what forms the beginning, what is the end or even, if there is or not a middle part of the sign. Again, this perception mostly depends on the circumstances of the case (length of the sign, syllabic distribution, use of typeface, etc) and does not depend on a set rule. It could even be that a sign is perceived as having a short beginning and ending and a proportionally much bigger middle or central part. Consequently, depending on the circumstances, the rule of the relevance of the beginning of the sign could have less weight to the benefit of a more relevant central part. Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 260

261 Identity and likelihood of confusion: Similarity of signs 560/1999 EN ELTON HILTON No LoC 715/1999 EN VOBIS COPIS No LoC confirmed by BoA Dec. 731/ /1999 EN PRESTA Ersta No LoC confirmed by BoA Dec. 794/ /1999 DE YOSTNER COSTNER No LoC 1490/2000 EN SINOIL EMOIL No LoC 2437/2000 EN PLOVER OLOVER No LoC 1489/2000 EN INOTENS DUOTENS No LoC However, the exact effect of differences at the beginnings of signs always depends on the specific circumstances. An overall impression of similarity may be given, nevertheless, in cases where the difference at the beginning of the signs is visually, phonetically or conceptually not clearly perceptible, or where other features of the signs play an important role, such as their structure or their sequence of syllables. 65/1998 DE BONAX SONAX LoC 80/1999 EN REBEL LoC 90/1998 EN ZADOVIR RADOVIR LoC 592/1999 EN XENOVA RENOVA No LoC 2396/2001 DE ASPIRIN BESPIRIN LoC 1670/2001 EN NORVIR NOVIRIO No LoC In contrast, as it is usually the beginning of a sign which catches consumers attention, where signs only differ in their endings, this difference is often insufficient to exclude similarity. 611/1999 ES VERITÉ VERI LoC 685/1999 FR QUINTON QUINTONINE LoC 1587/1999 EN SHAPER SHAPERITE LoC 164/2000 EN Lubrigel lubrigyn LoC 174/2000 EN GASTROMIL GASTROBIN No LoC 2591/2000 EN SATINANCE SATINESSE LoC 4.4. Sequence of syllables, rhythm and intonation The overall phonetic impression produced by a sign is particularly influenced by the number and sequence of its syllables. The common rhythm and intonation of signs plays an important role in the phonetic perception of signs. The Collins English Dictionary defines rhythm as the arrangement of words into a more or less regular sequence of stressed and unstressed or long and short syllables. Intonation is defined as the sound pattern of phrases and sentences produced by pitch variation in the voice. Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 261

262 Identity and likelihood of confusion: Similarity of signs Therefore, the key elements for determining the overall phonetic impression of trade marks are the syllables and their particular sequence. The assessment of common syllables is particularly important in the phonetic comparison, as a similar overall phonetic impression will mostly be determined by the shared syllables and their equal or similar combination. 35/1998 FR SIENA LA SIRENA No LoC 31/1999 DE LANDANA LANDAMANN LoC 35/1999 EN PHOTONICA PHOTOKINA LoC 44/1999 EN TELIA teeli LoC 1618/1999 DE kuku KUDU LoC It should also be noted that what can constitute a common part of the opposing signs from a visual analysis can, nevertheless, produce a phonetic impression that is not so similar or even different. This depends on the way syllables are constructed (and, therefore, pronounced) according to the rules of the relevant language. Dec. 473/2000 (EN) ACTOS / ENTACTOS, (Visually there was a clear coincidence: the last part of the CTMA reproduced the earlier sign: -ACTOS. Nevertheless, the earlier trade mark was pronounced as ak - tos, whereas the CTMA was NOT ent - ak - tos but en - tak - tos ; (No LoC). Furthermore, in some cases, consumers could be aware that the opposing trade marks are formed of the same syllables in a different order, so that if one of the words were rearranged it would be the same as the other. A clear example of this is where marks are composed of two transposed syllables, e.g. HOTPOT / POTHOT. Nevertheless, the consideration of such a transformation exclusively depends on the perception consumers will have of the signs. Only in cases where it will be evident to consumers that the application sign is an inversion of the syllables of the earlier trade mark (or vice versa), can the link be taken into consideration. In particular, when the signs are perceived as formed by two known elements, an inversion of these elements would be clearly noticeable. 1852/2002 (EN) SAT-COM / COM S.A.T (LoC). On the other hand, if the perception the relevant consumers have of the signs is that they are completely fancy terms, a syllable inversion will not be nocitiable and, therefore, will not contribute to a conclusion of similarity. 5. Composite signs signs that are partly or wholly included in the other sign In these cases, an element or the whole of a sign is totally or partially included in the other sign. Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 262

263 Identity and likelihood of confusion: Similarity of signs Before reaching a conclusion on similarity it is important to establish whether or not common component is predominant in relation to the other components of the signs. The approach on how to evaluate distinctiveness and dominance of components of signs has been discussed above under subpoint 1. The public perceives the sign as a whole and, in general, does not tend to split them up into parts. Therefore, assuming that all components have a similar degree of distinctiveness, it is not appropriate to focus only on the common component of the signs at issue. Particular attention should be paid to the distinctiveness of the earlier sign. As always, all the further circumstances of each specific case have to be carefully evaluated Signs containing figurative and word components When signs consist of both word and figurative components, the principle has been established that the word component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will most readily refer to a sign by its verbal component. It follows from this that a similarity of signs is probable in cases where the signs contain an identical or very similar word component, but different figurative components. The same principle applies to signs which consist of different figurative components, but also of a component showing an identical number. 64/1998 ES SSI USA LoC 28/1999 EN LoC 296/1999 EN LoC 1134/1999 ES 911 LoC 1001/1999 FR LoC 845/2000 EN LoC 1432/2001 EN KALMA LoC Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 263

264 Identity and likelihood of confusion: Similarity of signs On the contrary, in general the identity or similarity of the figurative component of the signs is insufficient to establish similarity in cases where at least one of the signs contains a further word component which is not shared by the other sign. 692/1999 EN No LoC 885, EN No LoC 886/ /1999 EN No LoC 2576/2000 EN No LoC 539/2001 EN No LoC 688/2001 EN No LoC As always, the outcome depends on the particular circumstances in each individual case. The finding may be different, in particular, due to the predominant character of the common figurative component or due to the limited distinctiveness of the word component. 583/1999 (EN) ISDN / ISDN (No LoC); 2637/2000 (EN) / (LoC). In other cases, the device element may cooperate with the word part in defining a particular concept and may even help the understanding of words that, in principle, might not be widely known to consumers. 679/2001 (ES) / (LoC). The signs were considered sufficiently similar for LoC based on the identity of goods as the device of a moon, present in both signs, made the equivalence between the Spanish and English words LUNA and MOON clearer to Spanish consumers Multi-part word signs In these cases the whole sign or just one of its components is fully incorporated in the other sign. The issues raised in the context of these cases are very complex. Particular attention should be paid to the criteria below Predominant character of the common component Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 264

265 Identity and likelihood of confusion: Similarity of signs The finding as to the predominance of the common component in the multipart sign(s) plays the most important role when judging on the similarity of such marks. This question has to be evaluated bearing in mind all the relevant geographical areas and taking into account all the relevant goods and services (see subpoint IV.2.). The predominant character of the common component can be based on its more distinctive content or its special figurative presentation in comparison with the other components of the sign(s) but, in most of the cases, it is the joint combination of both features that produces the impression of predominance in the sign. The distinctiveness of each of the different components has to be evaluated and compared with the others. The location of the common component at the beginning of the sign is relevant in this respect, but as such is not sufficient to establish its predominant character. 66/1999 EN DINOKIDS DINO No LoC 114/1999 FR DELI DELIBORI No LoC 512/1999 EN MAXTECH MAXDATA No LoC 905/1999 FR Arthur ARTHUR ET FELICE No LoC 1322/1999 EN PLANET PLANET SOCCER No LoC 1425/1999 EN SIMPLE SIMPLE LIFE No LoC 1537/1999 EN ORIGINS ORIGINE WORLD No LoC 1407/2001 EN IBUTOP IBUSOL No LoC Furthermore, the predominance of the common component may also be acquired through use. The finding of acquired distinctiveness through use depends on numerous factors which are set out below (subpoint IV.2.). 1000/1999 (ES) CRISTAL / CRISTAL CASTELLBLANCH (LoC). If a sign as a whole is fully incorporated in the other sign, the finding of its predominance in the other sign (compared to its further components) is generally sufficient to establish similarity of signs. 44/1998 EN SIMPLE SIMPLE D ANVERS LoC 397/1999 EN STITCHES Broken Stitches LoC 425/1999 EN ILUSION SMOOTH LoC ILLUSIONS 430/1999 EN STONES PRECIOUS STONES LoC 1137/1999 ES MAS & JOVER JOVER LoC 625/2000 EN SUN SUNPLUS LoC However, if the fully incorporated sign does not constitute the dominant component of the other sign (e.g. because it is placed at the end of the mark and/or because it is not particularly distinctive), in principle it is concluded that the marks are not similar overall. 1968/2000 (EN) JAFFA SUNRISE / SUNRISE (No LoC); 2768/2000 (EN) KALISTARLITE / STARLITE (No LoC). Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 265

266 Identity and likelihood of confusion: Similarity of signs Where both signs contain further elements to the common component, the predominance of the common component in only one sign is generally insufficient in itself for establishing similarity of signs. It rather has to be evaluated whether the predominance of the common element can be established in respect of both signs. 972/1999 (EN) SCRUMPY JACK / CIDER JACK (LoC); 1020/1999 (EN) ONE TOUCH / CLEAN TOUCH (LoC) Distinctiveness of the earlier sign The distinctive character of the earlier sign (or of an element or elements of it) is a further element which plays an important role when judging on the similarity of multi-part signs. This approach is in line with the finding of the Court that the distinctiveness of the earlier sign increases the likelihood of confusion. It follows that when the differences between components of signs consist in their most distinctive elements, the overall impression they give will be different. (See Part B.I likelihood of confusion, point degree of distinctiveness of the earlier mark) Names A special approach is justified in relation to signs which contain (business) names, since the public may perceive and evaluate the function of their representation differently from other components of signs (Business) names in combination with other components If a sign contains both a (business) name and another word component, there is the tendency to evaluate this further component as predominant. This is because in general the public understands the further component as the prime indicator of origin in respect of the specific goods and services. The (business) name is regarded by the public as of subsidiary nature in such cases. 364/1999 (FR) GATSBY BY GAT / GATSBY (LoC); 396/1999 (FR) GALA DE LOEWE / G GALA PERFUMERIES (LoC); 449/1999 (DE) DOCKERS / DockerS by Gerli (LoC); 290/2001 (EN) SPINNING made in Italy by Milena / SPINNING (LoC). Such an assumption requires that the relevant public perceive the nature of this component as a (business) name. This has to be evaluated as regards all the relevant geographical areas. 177/1999 (DE) Plastoclean / PlastiClean Thyssen Schulte (No LoC); 131/2000 (EN) PEPE / PEPE CABALLERO (LoC). Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 266

267 Identity and likelihood of confusion: Similarity of signs The applicability of this approach has to be carefully assessed in each individual case. In particular, the perception of the public may be different in cases where the further component of the mark is less distinctive or where the use of a (business) name as indicator of origin is common in the particular market sector First and family names Arguments of the parties about the right to use one s own (business) name are not valid in opposition proceedings, since it does not influence the issue of whether there will be likelihood of confusion on the part of the public. Furthermore, it should be noted that the registration of trade marks does not hinder the use of personal names due to the special protection which is provided for in Article 12(a) CTMR and in the relevant national trade mark laws according to Article 6(1)(a) of the Trade Mark Directive. 177/2000 (EN) GIORGI / GIORGIO (LoC). Family names have, in principle, a higher intrinsic value as indicators of the origin of goods or services than first names. This is because common experience shows that the same first names may belong to great number of people that do not have anything in common, whereas the presence of the same surname could imply the existence of some link between them (a family link). Therefore, consumers tend to pay more attention to family names than to first names. Nevertheless, this rule should not be applied automatically without having previously assessed what would be the consumers perception of the signs, in particular, and amongst other considerations, whether the public identify them as name+surname or whether the name or the surname are common or unusual. Only in this case could it be assumed that where two signs contain the same family name, there will be a finding of similarity of signs despite the presence of additional first names either in one or in both trade marks. 704/1999 (EN) REDAELLI / Giorgio Redaelli (LoC); 820/1999 (ES) Renoir / IVES RENOIR (LoC); 1477/1999 (EN) CLAUDIA BAKER / TED BAKER (LoC); 803/2000 (EN) BELTRAN / DARIO BELTRAN (LoC). The situation is different in cases where such signs share the same first name but there is no common surname. In general, this consideration leads to a finding that there is no similarity of signs. 1326/1999 (EN) LAURA / LAURA MERCIER (No LoC), confirmed by BoA R95/ Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 267

268 Identity and likelihood of confusion: Similarity of signs On the contrary, in cases where the signs are not recognised as name+surname but rather considered as fancy terms, no consideration as regards surnames would be appropriate and, therefore, the conclusion would usually be the opposite, namely, that the signs are similar because one of them identically reproduces the totality of the other. 131/2000 (EN) PEPE / PEPE CABALLERO (LoC). It has to be carefully assessed whether the above-mentioned general principle about the different value of first and family names as indicators of origin really fits the specific case. A different evaluation may be appropriate in cases where, in the relevant area, the surname is quite common or the first name is very distinctive due to its rare appearance in the relevant area or its reputation acquired through use. 467/1999 FR ROSY ROSY O GRADY LoC 1074/1999 EN AAXEL DAVID HELEN DAVID No LoC 1193/1999 EN JOHN SMITH PAUL SMITH No LoC 130/2000 ES PEPE PEPE CABALLERO LoC 2264/2001 DE Michael Schumacher Sabine Schumacher No LoC As always, the special graphic representation of the components may play an important role when assessing the effect of first and family names in the overall impression of the signs. Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 268

269 Identity and likelihood of confusion: Similarity of signs II. CONCLUSION ON SIMILARITY OF SIGNS The finding of likelihood of confusion always depends on all aspects of similarity and includes all other circumstances as well (similarity of goods or services, particular circumstances, etc.). The similarities or differences in the different (visual, phonetic and conceptual) aspects of similarity have to be evaluated and compared. It may be important to specify in this context the strength (degree) of the similarity in the different aspects. The final question on similarity of signs is whether, after an assessment of the various aspects of similarity of signs, the signs in conflict have sufficient elements in common, visually, orally, or conceptually, that, where the goods or services would be identical, it seems likely that the public will think that the goods or services marked with the signs at issue come from the same or economically linked undertakings. For practical reasons, it may be appropriate not to come to an overall conclusion on similarity of signs at this stage and evaluate this question together with the overall assessment on the finding on likelihood of confusion. This approach avoids repeating the assessment and weighing up of the different aspects of similarity. In particular, it should also be borne in mind that the outcome might be influenced by the other factors of likelihood of confusion. Therefore, when a decision of dissimilarity of signs is taken, due account must be taken of the principle that all factors of likelihood of confusion are interrelated with each other. This means that a conclusion of dissimilarity of signs, without taking into account the other factors of likelihood of confusion in the specific case, can only be arrived at if the same conclusion would have been reached even if the goods and services were identical and the earlier mark was highly distinctive. This has to be expressly mentioned in the decision. Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004 Page 269

270 OPPOSITION GUIDELINES Part 2 Chapter 2: Likelihood of confusion D. Global assessment Opposition Guidelines, Part 2, Chapter 2D -Status: March 2004 Page 270

271 INDEX CHAPTER 2: LIKELIHOOD OF CONFUSION D. GLOBAL ASSESSMENT I. GLOBAL ASSESSMENT - INTERDEPENDENCE Global assessment of all the factors Distinctiveness of the earlier mark Distinctiveness by nature Inherent distinctiveness Distinctiveness through use Degree of similarity between the signs and the goods and services Impact of the kind of goods and services on the assessment of resemblances The degree of sophistication and attention of the relevant public The average consumer Degree of sophistication of the customer Meaning of the criterion Consumers a. Mass consumption goods/services b. Technical or very specific goods/services Business customers Degree of attention of the customer Consumers a. High degree of attention b. Low degree of attention Business customers Coexistence of the conflicting marks on the market in the same territory Incidences of actual confusion Prior decisions by Community or national authorities involving conflicts between the same (or similar) marks Substantive aspects Procedural aspects No confusion between the signs themselves, but confusion about the origin (indirect confusion) Meaning Series (family) marks II. DISCLAIMERS Nature of Disclaimers Exception to the general principle (disclaimer affecting the earlier trade mark) Opposition Guidelines, Part 2, Chapter 2D -Status: March 2004 Page 271

272 Identity and likelihood of confusion: Global assessment CHAPTER 2: LIKELIHOOD OF CONFUSION D. GLOBAL ASSESSMENT I. GLOBAL ASSESSMENT - INTERDEPENDENCE 1. Global assessment of all the factors As the degree of similarity that may lead to confusion is not fixed, all factors relevant to the circumstances of the case must be considered. As the Court stated the likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, on the association that the public might make between the two marks and the degree of similarity between the signs and the goods [and services] (Sabèl, paragraph 22). Furthermore, the global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (Sabèl, paragraph 23). The Court added that in the assessment of the similarity of the signs a lesser degree of similarity between the goods may be offset by a greater degree of similarity between the marks and vice versa (Canon, paragraph 17). These principles suggest a balanced appreciation of all the relevant factors, and in particular, an assessment of the distinctiveness of the earlier mark, the degree of similarity of the signs and goods at issue, and the kind of link that the public might make between the two marks. Hence, this stage of the examination deals with the question of whether or not in a global assessment of all the relevant factors, the respective weight of these factors is sufficient to give rise to a likelihood of confusion. 2. Distinctiveness of the earlier mark In general trade mark doctrine, and in current practice in the Office, including the Boards, as well as in member states, a distinction is usually made between weak and strong trade marks. Strength in this context is equivalent to degree of distinctiveness in the ECJ language. Weak trade marks are those that have only a small degree of inherent distinctiveness. Opposition Guidelines, Part 2, Chapter 2D -Status: March 2004 Page 272

273 Identity and likelihood of confusion: Global assessment Marks just beyond the line of weak are marks that have some or an average degree of inherent distinctiveness. This is about the limit to which marks get when there is no proof of use and thus enhanced distinctiveness. Enhanced distinctiveness requires recognition of the mark by the relevant public. This enhanced distinctiveness is available both for inherently weak marks and for those which are inherently distinctive. At the upper end of the scale are marks that are well-known, and marks that have a reputation. Finally, there are famous marks, marks that are equivalent to household words, usually singular (but not necessarily so) in the sense that there are no competing, and even no non-competing, products on the market under such sign. The greater the degree of distinctiveness in accordance with the above criteria is, the larger will be the scope of protection. This is in line with the established case-law of the European Court of Justice. The Court explicitly laid down that the more distinctive the earlier marks, the greater will be the likelihood of confusion (Sabèl, paragraph 24). Therefore, 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 (Canon, paragraph 18). In determining the distinctive character of a mark, an overall assessment has to be made of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (Lloyd, paragraph 22). Therefore, the distinctiveness of the earlier mark always has to be taken into account when deciding on likelihood of confusion. It should be further noted that the Court has made clear that the strong distinctiveness of the earlier mark is an argument in favour of a finding of likelihood of confusion and not an argument against it, as has sometimes been expressed in literature on trade marks. 239/2000 ADOLFO DOMÍNGUEZ / ADOLFO (EN), 62/2001 NEXT / NEXTEYE (EN), 675/2001 VIÑA ESMERALDA / EMERALD HILL (EN). As the Court indicated in the Lloyd case, all marks have a greater or lesser capacity to identify the goods or services covered, and thus to distinguish those goods or services from those of other undertakings. It follows that marks of limited distinctive character have a lesser capacity to serve as an indicator of origin. In view of the above-mentioned statement of the Court in Sabèl, it can be concluded that the finding of a limited distinctive character of Opposition Guidelines, Part 2, Chapter 2D -Status: March 2004 Page 273

274 Identity and likelihood of confusion: Global assessment the earlier mark may serve as an argument that confusion with this mark is less likely than with marks of stronger distinctiveness. 76/1998 EN Negritelle LOS NEGRITOS 188/1999 EN ACTIVIN ACTILINE 584/1999 ES LA ARGENTINA CARNES ARGENTINAS 1043/1999 EN NEOLUX NEOLITE 329/2000 EN BANKEUROPA EUROBANK 937/2001 EN VITAL PHYTO-VITAL 1789/2001 EN MEDIA MARKT MEDIA-SOUND 2350/2001 EN Das leben leicht EUROTOPS gemacht EUROSHOP VERSAND (fig.) The distinctiveness of the earlier mark is not constant, but variable, depending on the perception the public has of the mark. The perception of the public may not only change due to the enhanced or diminished reputation of the specific mark, but also due to other factors (all these elements can only be considered from the evidence submitted by the parties). This might be in particular the case where the mark or some element thereof has been used in the meantime in a similar way by various marks in the relevant market sector. In this context, it is also important to assess carefully whether the mentioned situations exist in all the geographical areas and as regards all the relevant goods and services. In general it will be sufficient to evaluate the distinctiveness of the earlier mark at the time of the decision Distinctiveness by nature Inherent distinctiveness The Court stated that in determining the distinctive character of a mark account should be taken 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 (Lloyd, paragraph 23). The Court has also stated (Joined Cases C-108/97 and C-109/97, Windsurfing Chiemsee Produktions- und Vertriebs GmbH (WSC) v Boots- und Segelzubehör Walter Huber and Franz Attenberger, [1999] OJ OHIM 7-8/99, p. 1054, paragraph 37) that the assessment of distinctiveness also has to take into account the degree of familiarity amongst consumers with the sign (a geographical name, in the case), with the characteristics of the place designated by the sign, and with the category of goods concerned. Furthermore, the inherent distinctiveness of the earlier mark has to be evaluated by taking into account (each of) the relevant geographical area(s). Due to different linguistic and cultural backgrounds, the public in some of the relevant areas might not understand the descriptive content of an earlier mark. In such cases, the distinctiveness of the earlier mark is not to be regarded as limited in respect of these areas. Opposition Guidelines, Part 2, Chapter 2D -Status: March 2004 Page 274

275 Identity and likelihood of confusion: Global assessment 1191/1999 EN RIPOLIN RENTOLIN 1457/1999 EN MEGAKID MEGARIG 189/2000 EN TELEBINGO TeleBingo 1658/2000 EN AROMA 2450/2000 EN MARIE CLAIRE 2920/2001 EN Selenium Spezial A-C- E Selenium-ACE It should also be carefully assessed whether the finding of descriptiveness is valid for all the goods and services of the earlier mark. If this is not the case, a differentiation is necessary between the relevant goods and services. This might result in a different outcome as regards the finding of likelihood of confusion for different goods and services. Although not conclusive at all, an indication of an inherent descriptiveness of the earlier mark may be the registration of a variety of marks with the same element in the Community register or in the relevant national registries. The presence of many registered trade marks with the same element and protecting similar products will show, at least, that the element of choice is not particularly original. However, only a few such registrations are not sufficient to prove that the earlier mark has limited distinctiveness. 85/1999 LISAP / LISA (EN), 248/2000 ACTIVE WEAR / INTERACTIVE WEAR (EN). The fact that a mark may be inherently distinctive is not necessarily conclusive for a finding of its strength. This is so because there are marks with a low degree of distinctiveness (marks at times called suggestive or evocative Distinctiveness through use The Court has given some guidance in respect of the evaluation of distinctiveness acquired through use of the earlier mark. The Court has laid down the following factors to be considered: the market share held by the mark; how intensive, geographically widespread and long standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (Lloyd, paragraph 23). This list is not exhaustive. The requirements for a finding of distinctiveness through use have to be stricter in cases where the earlier mark has only a limited inherent distinctiveness. 282/1999 CAFÈ NOIR / CARTE NOIRE (EN). Opposition Guidelines, Part 2, Chapter 2D -Status: March 2004 Page 275

276 Identity and likelihood of confusion: Global assessment The evidence of distinctiveness acquired through use must refer both to the relevant geographical area and to the relevant goods and services. It has to be precisely established for which goods and services, according to the submitted evidence, such distinctiveness has been acquired (see part F Article 8(5) as regards the method of assessment of such evidence) 226/1999 FR MIKO MIK 1000/1999 ES CRISTAL CRISTAL CASTELLBLANCH 1193/1999 EN JOHN SMITH PAUL SMITH 1224/1999 EN 1340/1999 EN BOSS BOSSI 130/2000 ES PEPE PEPE CABALLERO 62/2001 EN NEXT NEXTEYE 675/2001 EN VIÑA ESMERALDA EMERALD HILL 3. Degree of similarity between the signs and the goods and services The Court has put also forward that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the signs and vice-versa (Canon, paragraph 17). Hence, the similarities between the signs must be assessed bearing in mind the similarities between the goods and services and vice versa. This means that if there are lesser similarities in one aspect they will be reinforced by stronger similarities in the other aspect which could lead to a likelihood of confusion. 969/99 BARONIA / BERONIA (ES), 789/99 ALLEGRO / ALLEGRO (EN), 1999/2001 BLÛ / B.L.U. (EN). Consequently, identity or close similarity of either signs or goods and services will generally be an indication towards confusion, unless there are clear differences in the other direction enabling the consumer to distinguish between them. Examples of dissimilar signs: 394/99 / (EN), 1974/2001 DERS / SHADERS (EN) E.g. TMS identical or very similar but G/S dissimilar: Opposition Guidelines, Part 2, Chapter 2D -Status: March 2004 Page 276

277 Identity and likelihood of confusion: Global assessment 964/99 EN THE GREY LINE GREYLINE 1031/99 EN STARTER STARTER 1113/99?? EN AFTER DARK AFTER DARK 419/99 EN FLEXI FLEXI 1039/2001 EN ABM a.b.m.victoria 1428/2001 ES (fig) (fig) 1847/2001 EN MARTIN LOOGAN MARTIN LOGAN 1489/2001 EN DOM DOM 1979/2001 ES BRK 4. Impact of the kind of goods and services on the assessment of resemblances The Court has further stated that when evaluating the importance attached to the degree of visual, phonetic and conceptual similarity between the signs, it is appropriate to take into account the category of goods and the way they are marketed (Lloyd, paragraph 27). The category of goods and services involved may increase the importance of one of the different aspects of similarity of signs (visual, phonetic and conceptual). For example an aural or conceptual identity or similarity of signs may be less important in the case of goods and services that are usually examined visually or may be tried-on before being bought. In such cases, it is the visual impression of the signs that counts more for the finding on likelihood of confusion. 309/99 WOOKI / WALKIE (DE), 851/99 FIFTIES / MISS FIFTIES (EN) confirmed by BoA Dec. 757/1999-2, 394/99 L / L (EN), 1207/99 ILS / ELS INTERNATIONAL (EN). Moreover, the circumstances in which the goods are marketed as well as the country where they are marketed may play an important role. These circumstances may enhance or diminish the ability of the public to perceive the differences between the signs. 1999/2001 BLÛ / B.L.U. (EN) For example, it may be common to order and buy the specific goods and services with reference to hand-written notes. This may lead to a blurring of subtle differences between the signs. However, in view of the principle that the signs have to be compared in the form they enjoy protection, such findings have to be applied very cautiously. The phonetic perception of the sign may be influenced by factors such as the presence of various other sounds perceived by the addressee at the same time. In particular, this may be the case as regards sales points with an increased noise factor, such as supermarkets or bars. Opposition Guidelines, Part 2, Chapter 2D -Status: March 2004 Page 277

278 Identity and likelihood of confusion: Global assessment R MYSTERY / MIXERY (EN), 31/1999 Landana / LANDAMANN (DE) 5. The degree of sophistication and attention of the relevant public 5.1. The average consumer For the Court, the average consumer is deemed to be reasonably well informed and reasonably observant and circumspect (Lloyd, paragraph 26). This general statement relates both to sophistication and to attention: - being reasonably well informed to sophistication, - being reasonably observant and circumspect to attention. This qualification of the average consumer applies mutatis mutandis to the business customers. In their case, to be reasonably well informed and reasonably observant and circumspect will often mean a higher level of sophistication and attention than that of consumers. If the average customer of one product or service is the average business customer, and the other public consists both of the average consumer customer and the average business customer, only the average business customer will be of relevance. Example: Paints in general are sold both to painters (i.e. for professional uses of these business customers) and to consumers for do-it-yourself purposes. Paints for industry, on the other hand, are not marketed to consumers. Therefore, when the specifications of the two marks cover paints and paints for industry respectively, only business customers constitute the relevant public since only they might usually get in connection with both marks For the Court, the level of attention of the average consumer varies according to the category of the goods and services in question (Lloyd paragraph 26). More precisely, as shown above, what matters is the level of sophistication and attention. This is not only true for goods and services, which are exclusively offered to business customers, but also for specific categories of goods and services that possess features affecting the sophistication and/or attention even where the general public is targeted, as will be explained in the following sections. The enhanced sophistication and / or attentiveness of the public as regards the relevant goods and services either of the CTM application or of the earlier mark will generally be a significant indication against confusion Degree of sophistication of the customer Opposition Guidelines, Part 2, Chapter 2D -Status: March 2004 Page 278

279 Identity and likelihood of confusion: Global assessment Meaning of the criterion The degree of sophistication differs both between the consumers and the business customers and within the two groups. The more sophisticated the customer, the less likely it is that confusion will occur. The degree of sophistication is of relevance for the customers capacity to perceive the various likelihood-of-confusion factors, and in particular the criteria for determining the similarity of the goods and services and the similarity of the signs. For instance, a good knowledge of the market situation relating to the goods/services in question tends to reduce likelihood of confusion (see below, under b and ) Consumers a. Mass consumption goods/services Where the consumers are the public at large, as in the case of mass consumption goods, the degree of sophistication is that of a reasonably wellinformed consumer. b. Technical or very specific goods/services In cases, where only a section of the public at large is concerned, as in the case of technical or very specific goods/services, the level of education or knowledge in relation to the goods and services concerned has to be taken into account. This level can be of importance both for the perception of the marks (e.g. foreign language terms) and for the particular type of goods or services (e.g. financial services). If specialised or technical knowledge is required for using a product, a more educated public in respect of that product may be involved, even where such products are not specifically intended for business customers but are also available to the public at large. Similar considerations apply to goods or services where the level of attention is high, as discussed below. In these instances, e.g. where tobacco or newspapers are concerned, the consumers may have a degree of sophistication that goes far beyond the average level. 512/1999 MAXDATA / MAXTECH (EN), 1390/2001 FOCUS / FOCUS DYNAMICS (fig) (FR) Business customers Their specific professional knowledge and expertise relating to the goods/services in question have to be taken into account. Examples: Opposition Guidelines, Part 2, Chapter 2D -Status: March 2004 Page 279

280 Identity and likelihood of confusion: Global assessment The highly qualified customers of the goods in question will recognise that ELISA is an abbreviation for enzyme linked immunoassay solvent assay (a sensitive diagnostic test for a past or current exposure to an infectious agent such as the AIDS virus) RELISA / VARELISA (EN) Business customers will be aware of the fact that financial institutions or insurance companies will not be responsible for the technological aspects of issuing magnetic or chip cards. 2066/2001 DENCARE / DentCard (fig)(de) 5.3. Degree of attention of the customer The Court stated: It should also be borne in mind that the average consumer s level of attention is likely to vary according to the category of goods or services in question (Lloyd, paragraph 26). The greater the level of attention, the lesser the likelihood of confusion Consumers It is the level of the so-called purchase involvement which has a significant impact on consumer choices of goods and services. The level of involvement relates to the importance of a decision to the consumer. Thus, it corresponds to his/her degree of attention. a. High degree of attention A high degree of attention is usually connected with three types of purchases: expensive, infrequent or risky purchases. They can be rational. The average consumer often seeks professional assistance or advice when choosing or buying certain types of goods/services. Examples are computers (expensive), financial services (infrequent), or prescription drugs or pharmaceutical products sold exclusively in pharmacies (risky). A high degree of attention can also apply to emotional purchases, e.g. those concerning jewellery. (A) Pharmaceuticals (a) Practice of the Opposition Division from October 2001 (aa) Average consumer Where pharmaceutical goods are prescribed or sold by qualified professionals such as doctors or pharmacists, the average consumers are, on the one hand, specialist experts such as doctors or pharmacists and, on the other hand, the usual consumers who do not have any specific medical and pharmaceutical knowledge. However, even in the case of drugs which require a prescription in certain European countries, these drugs may, in practice, be sold by pharmacists to consumers without a prescription. Therefore, the Opposition Guidelines, Part 2, Chapter 2D -Status: March 2004 Page 280

281 Identity and likelihood of confusion: Global assessment consumer should always be taken into consideration when determining the relevant public. Where the pharmaceutical goods are not prescribed or sold by qualified professionals but are freely sold on the market, the average consumer is mostly the patient him/herself. Furthermore, pharmaceuticals currently available only on prescription may in the future become available as over-the-counter (OTC) medicines. Where the pharmaceutical goods of the CTM application are sold over the counter and the pharmaceutical goods covered by the national registration would probably only be available on prescription, or vice versa, the Office must assume that the relevant public is both qualified professionals and also patients or average consumers without any specific medical and pharmaceutical knowledge. The Office may not limit such protection by hypothetical considerations concerning the preparations which might be sold under the mark. (bb) Attention (i) Prescription pharmaceuticals A general rule according to which the average consumer is to be regarded as more attentive exists only in relation to prescription pharmaceuticals, since these are in general prescribed by a doctor and checked and handed over to the patients by a pharmacist. Medical persons or pharmacists, because of their professional education, knowledge or experience, will normally be able to distinguish between drugs with small name differences, simply because of their different therapeutic purpose. Furthermore, a patient who is aware of the potentially detrimental impact of pharmaceuticals will pay specific attention to the names of the products and to their evocative meaning. Summary (ii) Non-prescription (OTC) pharmaceuticals However, the same does not apply to non-prescription (OTC) pharmaceuticals for two reasons: Even though consumers should pay more attention when purchasing such drugs, they may in fact not do so. Furthermore, their attention will depend on the therapeutic indication. The consequence for OD decisions is: The attention is evaluated on a case-by-case basis. A finding of increased attention of consumers of OTC pharmaceuticals cannot be assumed in general but must be established from the circumstances of the case. Therapeutic indications, in particular, matter. Opposition Guidelines, Part 2, Chapter 2D -Status: March 2004 Page 281

282 Identity and likelihood of confusion: Global assessment Where both marks cover prescription drugs, the attention will generally be higher. However, where either the earlier mark or the CTM is for OTC drugs, there will be NO general presumption of an enhanced degree of attention. This is because the final consumers of the prescription pharmaceuticals (who receive them via specialists) might choose non-prescription (OTC) pharmaceuticals themselves, which are covered by one of the marks. Background It cannot be claimed as a general rule that an unqualified consumer who wants to buy an over-the-counter medicine for a specific purpose in a pharmacy will be able to distinguish between drugs with small name differences. The attention paid by this consumer depends on the specific drug and the specific purpose, need or effect. It may be that for more complicated purposes or more serious disorders the normal attention of an average consumer could be higher. However, with regard to medicines for mild disorders and minor afflictions such as painkillers, sleeping pills or healing ointments, the degree of attention may be very low. A leaflet giving all the necessary detailed information about the product is normally provided with pharmaceutical preparations. The average consumer will normally not read this description before or during the act of purchasing but perhaps afterwards, and the pharmacist will not automatically provide advice, especially in relation to non-toxic drugs, at least not without a request from the customer. There is an increased tendency in society of self-cure, through self-diagnosis and reliance on oral recommendations of relatives, colleagues or friends. Only in special cases, for example in relation to dangerous drugs, will the pharmacist enquire about the cause and make comments or give instructions. T 10 / 01-6 PREDONIUM / SEDONIUM (EN) statement of case (b) Boards of Appeal Medical persons or pharmacists can distinguish between drugs by small differences of the names simply because of a different therapeutic purpose. But there is no common principle that the average consumer will usually be very careful when purchasing a drug and will in general be particularly attentive to small differences between the marks. The kind of attention of the normal consumer who wants to buy a nonprescribed medicine for a special indication in a pharmacy depends on the special drug and the special purpose, need or effect. For more complicated purposes the normal attention of an average consumer could be higher. But regarding medicines for mild disorders, minor afflictions, distresses, or bodily ailments, such as painkillers, sleeping pills or healing ointments, the degree of attention may be very low. Opposition Guidelines, Part 2, Chapter 2D -Status: March 2004 Page 282

283 Identity and likelihood of confusion: Global assessment A-MULSIN/ALMOXIN, R 816/ (EN) (25/04/2001): l.o.c found; R 0401/ GASTRIN / EUGASTRIM (EN) (07/06/2001) and R 0964/ ABACOR / ACCUCOR (EN) (12/09/2001): no l.o.c. It must be taken into account that in some countries medicinal products are administered over the counter, without prescriptions, some consumers tend to resort to self-prescription and professionals are often overworked and tend to write prescriptions with a hardly legible handwriting. R 1178/ TEMPOVATE / EMOVATE (or) EUMOVATE (EN) (14/02/2002) In the earlier case-law of the Boards of Appeal, the former OD practice that no distinction between OTC and prescription drugs must be made was corroborated. When buying pharmaceutical products, the average consumer will pay a higher degree of attention with respect to these products (independently of whether or not these are OTC). R 303/ BONOLAT / PONALAR (DE) (02/08/2000) (B) Expensive purchases, in particular cars High price, in particular in the case of luxury products, is a good reason for the consumer to be more circumspect as to the origin and the quality of the article concerned. The attention may even be enhanced in cases where the specific product is regarded as reflecting the social status of its owner. Example: cars and related services Taking into consideration the price of the cars involved, the average consumer will only be the affluent part of the general public. It is to be expected that the average consumer will not buy a car, either new or second hand, in the same way as he or she would buy articles of daily use. The average consumer will be an informed one, taking all relevant factors into consideration, for example, price, consumption, insurance costs, personal needs or even prestige. Besides the dealers, other sources of information can be car magazines, colleagues and friends or the Internet. As regards motor vehicle maintenance and repair services the average consumer is also expected not to take the car to just any garage but to inform themselves in advance about the garage, qualifications and specialisation. S TYPE / S-CLASS R 969/ (EN) The above principles, however, must not lead to the conclusion that highly distinctive marks are not adequately protected even if the goods are identical, merely because the goods are expensive, but may be protected against similar goods/services which are not similarly expensive. Such a result can be Opposition Guidelines, Part 2, Chapter 2D -Status: March 2004 Page 283

284 Identity and likelihood of confusion: Global assessment avoided by properly assessing the reputation of the earlier mark in the global likelihood-of-confusion analysis, which will weigh heavily in favour of likelihood of confusion. (C) Products with high brand loyalty: the example of tobacco Furthermore, a high degree of attention can be the consequence of brand loyalty, such as in the case of tobacco products and articles. Smokers are considered particularly careful and selective as to the brand of cigarettes they smoke, so a higher degree of brand loyalty and attention is assumed when tobacco products are involved. Therefore, in the case of tobacco products a higher degree of similarity of signs may be required for confusion to occur. R-78/ FOSTER / FROSTY (DE): even though tobacco products are relatively cheap mass articles, the consumers have a high taste and brand loyalty in this field and therefore recognise quickly the preferred brand. 16/1998 ARISTON / HORIZON (EN), 113/1998 SUNSET / SUNRISE (EN), 959/1999 KINGS / SUPERKINGS (EN). Finally, it is important to mention that, in case of highly distinctive marks, brand loyalty must not lead to a lower degree of protection. Insofar, similar considerations as in the case of expensive purchases above apply. b. Low degree of attention A low degree of attention can be associated, in particular, with habitual buying behaviour. Rational purchase decisions in this area relate to, for example, basic foodstuffs. Emotional decisions cover, for example, sweets Business customers Purchases made by business customers are often more systematic than consumer buying. They require accountability and their cost and efficiency are often monitored. Thus, the degree of attention when making such purchases is usually higher than that of consumer customers and the likelihood of confusion will therefore be lesser. 300/1999 PEROX (cl.3) / PELOX (cl.1, 3) (DE), 371/1999 TAMRON (cl.9) / AMRON (cl.9) (EN). In 1603/2002 FIBROSTEEL / FIRESTEEL (FR) it was held that the relevant public of the goods in classes 6 and 17 consisted of professionals who are more attentive. Opposition Guidelines, Part 2, Chapter 2D -Status: March 2004 Page 284

285 Identity and likelihood of confusion: Global assessment 6. Coexistence of the conflicting marks on the market in the same territory Evidence of co-existence of parallel marks on a national level may weigh against likelihood of confusion. 85/1999 LISAP / LISA (EN), 1193/1999 JOHN SMITH / PAUL SMITH (EN). However, the indicative value of co-existence should be treated with caution. There might be different reasons why the two signs coexist on the national level, e.g. a different legal or factual situation in the past or prior rights agreements between the parties involved. 1340/1999 BOSS / BOSSI (EN), 537/1999 SIDE / SIDE (EN). Moreover, such a co-existence argument requires evidence that the signs have been used in the relevant market. Evidence of the existence of the relevant marks on the same Register does not suffice. 105/1999 Hollywood / Hollywood (FR), 537/1999 SIDE 1 / SIDE (EN), 1584/1999 Marco / MALCO (EN). In several decisions the Third and Fourth Boards of Appeal have emphasised the importance of co-existence on the marketplace and not only on the Register. The OD follows these decisions. R 360/ NO LIMITS / LIMMIT (EN): Coexistence of confusingly similar marks in the trade mark register is not relevant. Article 8(1)(b) CTMR makes reference to confusion on the part of the public, i.e. confusion on the market place. Evidence of actual and peaceful coexistence of conflicting marks on the market is a circumstance that the Board may take into consideration in order to assess the likelihood of confusion in the meaning of Article 8(1)(b) CTMR. However, the appellant has failed to supply that evidence. The simple allegation that the respondent did not take action against registration or use of the appellant s mark for Spain is not sufficient. The argument of past peaceful coexistence must be supported by evidence of real presence of the two marks on the market place. Coexistence should be understood as co-use, namely concurrent use of the two (supposedly conflicting) marks, rather than coregistration, i.e. concurrent presence in a trade mark register. The appellant did not supply evidence that his mark and the respondent s mark have actually been co-used in Spain. Opposition Guidelines, Part 2, Chapter 2D -Status: March 2004 Page 285

286 Identity and likelihood of confusion: Global assessment For the similar reasoning of the Third Board see R 0001/ CHEE.TOS/CHITOS (EN) and R 0851/ MAGIC / MAGIC BOX (EN). Co-existence on the Register may, however, be considered as one element in the likelihood-of-confusion analysis. But this may only be the case if it is clear to the Office that the Member State, in which the concurrent earlier mark is on the Register, examined relative grounds for refusal ex officio in the course of the proceedings that led to the registration of the national mark concerned. In GOLDSHIELD, the Board found that the marks had also coexisted on the marketplace for several years and that the opponent had made no attempt to challenge the validity of the national registration of the applicant s mark. The Board had considered in this case that coexistence may not be decisive but is nonetheless highly persuasive of an absence of likelihood of confusion. This latter conclusion is at odds with the OD s practice. The OD considers that coexistence on the marketplace may weigh against likelihood of confusion but not as being highly persuasive of its absence. R 0415/ GOLDSHIELD / SHIELD (EN) Civil agreements between the parties of any kind are irrelevant in opposition proceedings. The parties may commence legal actions on a national level and, eventually, request a suspension of the opposition proceedings. 7. Incidences of actual confusion Likelihood of confusion, or the terms treated as synonyms in this Guide, i.e. risk of confusion and danger of confusion, does not require actual confusion but only the probability of confusion. However, evidence of actual confusion is a factor that weighs in favour of likelihood of confusion. To properly weigh evidence on the number of occasions when actual confusion has arisen, it must be assessed in the light of the number of opportunities for confusion. If the business transactions are voluminous but the instances of confusion are sparse, such evidence will have little weight in the likelihood-of-confusion assessment. Lack of actual confusion has been treated in the context of co-existence above. 8. Prior decisions by Community or national authorities involving conflicts between the same (or similar) marks 8.1. Substantive aspects Decisions of national courts, including Community trade mark courts, and of national offices in parallel cases do not have a binding effect on the Office. Opposition Guidelines, Part 2, Chapter 2D -Status: March 2004 Page 286

287 Identity and likelihood of confusion: Global assessment However, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings. National courts have a thorough knowledge of the specific characteristics of their Member State, in particular as regards the marketplace reality in which goods and services are marketed and the customer perception of signs. In view of the harmonisation of the national trade mark laws, national courts (not acting as Community trade mark courts) and offices apply substantially the same law as the Community trade mark courts and the Office. However, considering the decisions of national authorities requires the submission of sufficient information, in particular about the exact facts on which the decision is based. Furthermore, it may be relevant whether or not a national decision was based on a national law in which the EEC Harmonisation Directive had been properly implemented. 80/1998 DE ZEWA WEPA 449/1999 DE DOCKERS DOCKERS BY GERLI 1193/1999 EN JOHN SMITH PAUL SMITH 1389/1999 FR Ives Rocher Yves Roche 278/2000 EN SEPHORA Sephora 869/2002 DE Bit Bud (decision of the German Bundesgerichtshof not followed) R 1031/ SHAPE OF TUBES SHAPE OF TUBES M&M's MINIS (3-D NESTLÉ (3-D MARK) MARK) R 552/ EN COSMOPOLITAN COSMETICS COSMOPOLITAN 8.2. Procedural aspects The OD follows the position of the Fourth Board. According to their view, the OD is not bound in its decision to refer to or to repeat every single submission or reference made by the applicant in the proceedings before it; provided that it is clear from the content of its decision that it has taken into account all the substantial issues of law and fact raised by the parties to the proceedings, which might be material to the final resolution one way or another of the dispute before it and that the decision is itself properly reasoned in a manner consistent with the conclusion reached. R 0634/ a (fig.) / a (fig.) (CFI case) According to the Third Board, not considering a submitted decision of a national authority in a parallel case would lead to insufficiency in the reasoning in accordance with Article 74 CTMR. Opposition Guidelines, Part 2, Chapter 2D -Status: March 2004 Page 287

288 Identity and likelihood of confusion: Global assessment R 0235/ (EN) APAGARD / GARD, DENTAGARD 9. No confusion between the signs themselves, but confusion about the origin (indirect confusion) 9.1. Meaning The Court has clarified that the concept of likelihood of association is not an alternative to that of likelihood of confusion, but serves to define its scope (Sabèl, paragraph 18). The Court has stated that a trade mark must offer a guarantee that all the goods or services bearing it have originated under the control of a single undertaking which is responsible for their quality. Accordingly, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings, constitutes a likelihood of confusion (Canon, paragraph 28, 29). This means that there is also a likelihood of confusion where the relevant public is able to distinguish between the marks, but may believe that the goods and services they cover are from the same undertaking or economically-linked undertakings. It has not been explored yet what is to be regarded as a sufficient economical link in this context. The kind of link that the public might make between the marks is particularly significant for the overall assessment of confusion as it will show whether there is a risk that the consumer might be mistaken as to the origin of the mark or might simply associate the marks due to certain similarities. The final conclusion is largely a matter of degree. The connection made on the part of the consumer must be of such an intensity as to make him believe that the goods come from the same undertaking or from economically linked undertakings (see subpoint I.3.3. above). 1390/2001 FOCUS / FOCUS ONE (FR), 1629/2001 XPRESSO / EXPRESSO (EN) 9.2. Series (family) marks A sufficient degree of connection for making the consumers believe that the goods come from the same undertaking or from economically linked undertakings has been assumed, in particular, in cases of series or family trade marks. House marks or product-line identifiers are often combined with other secondary elements in a series of marks showing common origin. The systematic use of a basic sign in different combinations and contexts may lead the public to disregard secondary differences, thinking that they merely indicate a new product in a product-line from the same business entity. Opposition Guidelines, Part 2, Chapter 2D -Status: March 2004 Page 288

289 Identity and likelihood of confusion: Global assessment There is no need that some or all the signs forming the family of marks enjoy reputation in order that the root sign is perceived the common element as a business identifier of a certain undertaking, although it is clear that such evidence will strongly contribute in favour of such acknowledgement. 2551/2002 (EN) Mc NUGGETS, McCRISPY, McBACON, etc / Mc BAGEL An assumption of family marks on the part of the public requires that the common component of the marks at issue has, by virtue of use, the necessary distinctiveness to be able to serve, in the eyes of the public, as the principal indicator of a product line. In order to allow the Office to acknowledge that the different trade marks invoked by the opponent effectively form such a family of marks, the opponent should demonstrate not only that he is the owner of the marks, but also that the public concerned recognises the common part of these marks as originating from one undertaking. Such recognition by the public can only be inferred through submitting evidence of use of the family of trade marks. 2126/2000 BrainNet (EN) (confirmed by the BoA R 1131/2000-2), 2342/2000 PEPPER (EN), 2844/2000 LIFESOURCE (FR). The family of marks doctrine may be regarded as a typical example of likelihood of association. Because of the perception of a particular part of a trade mark as originating from a specific undertaking, people will make associations and believe that if another sign is also composed of that element, it is another trade mark from the same undertaking in question. Normally the trade marks constituting a family and used as such are all registered marks. However, it cannot be precluded that the family of marks doctrine may include non-registered trade marks as well, if this is compatible with the provisions of the relevant national laws. The argument that there is a family of marks does not need to be brought into the proceedings as a ground of opposition, but can be considered as additional facts, evidence and arguments. Therefore, the opponent, having based his opposition on a single earlier trade mark (registered or not) could bring into the proceedings the argument - and the supporting evidence - that his earlier trade mark has been used together with other trade marks, forming a family of marks under the aforementioned substantive conditions. It should be taken into account that there will be no assumption of a family of marks where the common component is quite weak or where the further components of the earlier signs are predominant in the overall impression of these signs. Opposition Guidelines, Part 2, Chapter 2D -Status: March 2004 Page 289

290 Identity and likelihood of confusion: Global assessment 75/1998 EN SYSTEMACTION SYSTEM 177/1999 DE Plastoclean PlastiClean Thyssen Schulte 610/1999 ES ONDA MUNDO MUNDO Ole 1222/1999 EN QUICKSHIP Quickstep 1738/2001 EN OPHTAL, CROM- ALERGOFTAL OPHTAL, VISC- OPHTAL, PAN- OPHTAL The assumption that a particular mark forms part of a family of marks requires that the common component of the signs is nearly identical. This requirement also applies to its presentation and location in the signs. 57/1998 BECK s / ISENBECK (DE), 189/1999, 625/1999 LUREDIS / LUREDOX (EN). However, minor graphical differences in the common component may not exclude an assumption of a series of marks, since such differences may be understood by the public as a modern presentation of the same product line. Even a different order of the letters may be possible. 75/1998 SYSTEMACTION / SYSTEM (EN), 1265/1999 SOREL/SOLERS (EN). On the contrary, different or additional letters concerning the common component generally do not allow an assumption of a family of marks. 57/1998 BECK s / ISENBECK (DE), 177/1999 Plastoclean / PlastiClean Thyssen Schulte (DE), 1738/2001 OPHTAL, CROM-OPHTAL, VISC-OPHTAL, PAN- OPHTAL / ALERGOFTAL (EN). Furthermore, the goods and services of the applicant s mark must be identical or similar to the common core of the goods or services covered by the earlier marks. The assumption of a family of marks is more likely where there is a close similarity or even an identity of the goods and services in question. 136/2000 ETCH A SKETCH / SKETCH (EN). Opposition Guidelines, Part 2, Chapter 2D -Status: March 2004 Page 290

291 Identity and likelihood of confusion: Global assessment II. DISCLAIMERS 1. Nature of Disclaimers According to Article 38(2) CTMR, disclaimers as regards CTM applications serve for the purpose of permitting registration of a trade mark containing elements that are not distinctive. Therefore, their effect is to publicly register a statement informing third parties that the applicant cannot claim any exclusive right as regards the non-distinctive element. Consequently, in these cases, the practical treatment of a disclaimer when assessing the overall impression of a sign will not be much different than that of the non distinctive element if no disclaimer had been filed: the disclaimed part will not be considered a distinctive element of the mark. However, complications will arise when trade marks have been registered with a disclaimer affecting distinctive parts. This could happen firstly because national laws entitle the disclaiming of distinctive elements at the will of the applicant (usually to overcome relative objections). But secondly, it may also happen when the disclaimer covers several non distinctive elements that, nevertheless, have some distinctive character in their particular combination. And, as regards CTMAs it may even happen that a disclaimed element is devoid of distinctive character only in a part of the EU because it is a word only understood by those speaking a particular language or languages. The main criteria to solve the possible combinations of disclaimers in the earlier rights and or in the CTMA covering either non distinctive elements or distinctive elements has to be derived from the principles on the comparison of signs developed by the ECJ. According to this jurisprudence, the assessment of likelihood of confusion relies on the overall impression produced by the signs on consumers of the relevant market. Consumers are ignorant on whether a disclaimer has been introduced in the register or not. A disclaimer per se does not affect the assessment on the similarity between two trade marks within the context of opposition proceedings as provided for by the Community trade mark system. (R 473/ confirming OD decision 398/2000 vs ) The disclaimer is not physically reflected in the form under which the sign is going to be used in the market. That is, the element subject to a disclaimer is not removed from the sign. As the role of the Office in opposition proceedings is to assess the likelihood of confusion, our decision can not artificially remove an element that will, nevertheless, be present in the trade mark when used. Opposition Guidelines, Part 2, Chapter 2D -Status: March 2004 Page 291

292 Identity and likelihood of confusion: Global assessment Consequently, if the disclaimed elements are not completely devoid of distinctive character, they can not be disregarded when comparing the signs. 1130/1999 FUERTE VENTURA / Qué Pasa Fuerteventura (EN), 203/2000 JOELFERRIN / FERRINI ITALIA (EN), 3122/2000 MEDIASAT /,1082/2001 KINDER / (EN). 2. Exception to the general principle (disclaimer affecting the earlier trade mark) Nevertheless, in the application of the aforementioned principles it has also to be borne in mind that the disclaimer produces legal effects as regards to the scope of protection granted to the owner of the trade mark. By inserting a disclaimer, the ius prohibendi of the trade mark proprietor is reduced as regards the disclaimed element. Under these circumstances, the owner of the earlier mark does not have any exclusive right to the disclaimed element and cannot hinder its registration or use. Therefore, it will not be coherent to always follow the aforementioned approach. In such cases where the result of applying that approach would lead to granting the opponent wider scope of protection than the one legally recognised, an exception has to be provided. As an example, in the following cases, the scope of protection acknowledged was that resulting from the exclusion of the disclaimed part when comparing the signs. 651/1999 BIG DEAL/D.E.A.L. (EN), 773/99 FREE/FREEMAN (EN), 2602/2000 / BRIGHT BROTHERS (FR), 708/2001 vs TRAVELCARD (EN), (The concept of likelihood of confusion to which Art.8(1)(b) refers sets the borderline between trade mark application that do not infringe the exclusive rights of earlier trade marks and the ones that would do so if registered. Where there is no exclusive right [has been disclaimed], there can not be any conflict between rights). Opposition Guidelines, Part 2, Chapter 2D -Status: March 2004 Page 292

293 OPPOSITION GUIDELINES Part 3 Unauthorised filing by agents of the TM owner (Art.8(3) CTMR) Opposition Guidelines - Part 3, Article 8(3) CTMR Status: March 2004 Page 293

294 INDEX PART 3: UNAUTHORISED FILING BY AGENTS OF THE TM OWNER - ARTICLE 8(3) I. PRELIMINARY REMARKS Origin of Article 8(3) CTMR Purpose of Article 8(3) CTMR 296 II. ENTITLEMENT OF THE OPPONENT..297 III. SCOPE OF APPLICATION Kinds of marks covered Origin of the earlier mark.299 IV. CONDITIONS OF APPLICATION Agent or representative relationship Nature of the relationship Form of the agreement Territorial scope of the agreement Relevant points in time Application in the agent s name Application without the owner s consent Absence of justification on the part of the applicant Applicability beyond identical signs - goods and services..307 Opposition Guidelines - Part 3, Article 8(3) CTMR Status: March 2004 Page 294

295 Unauthorised filing by agents of the TM owner PART 3: UNAUTHORISED FILING BY AGENTS OF THE TM OWNER - ARTICLE 8(3) I. PRELIMINARY REMARKS According to Article 8(3) CTMR, upon opposition by the proprietor of an earlier trade mark, a trade mark shall not be registered: where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor s consent, unless the agent or representative justifies his action. 1. Origin of Article 8(3) CTMR Article 8(3) CTMR has its origin in Article 6 septies of the Paris Convention which was introduced into the Convention by the Revision Conference of Lisbon in The protection it affords to trade mark owners consists in the right to prevent, cancel, or claim as their own unauthorised registrations of their marks by their agents or representatives, as well as to prohibit use thereof, where the agent or representative cannot justify his acts. Article 6 septies reads as follows: (1) If the agent or representative of the person who is the proprietor of the mark in one of the countries of the Union applies, without such proprietor s authorisation, for the registration of the mark in his own name, in one or more countries of the Union, the proprietor shall be entitled to oppose the registration applied for, or demand its cancellation or, if the law of the country so allows, the assignment in his favour of the said registration, unless such agent or representative justifies his action. (2) The proprietor of the mark shall, subject to the provisions of paragraph (1) above, be entitled to oppose the use of his mark by his agent or representative if he has not authorised such use (3) Domestic legislation may provide an equitable time limit within which the proprietor of a mark must exercise the rights provided for in this article. Article 8(3) CTMR implements this provision only to the extent it gives the rightful owner the right to oppose applications filed without his authorisation. The other elements of Article 6 septies PC are implemented by Articles 11, 18 and 52(1)(b) CTMR. Article 52(1)(b) gives the owner the right to cancel unauthorised registrations, whereas Articles 11 and 18 enable him to prohibit the use thereof and/or to request the transfer of the registration to his own name. Opposition Guidelines - Part 3, Article 8(3) CTMR Status: March 2004 Page 295

296 Unauthorised filing by agents of the TM owner Since Article 42 CTMR provides that an opposition may only be based on the grounds provided for in Article 8, the additional rights conferred on the owner by the above provisions may not be invoked in opposition proceedings. Hence, any request by the opponent, either for the prohibition of use of the agent s mark, or for an assignment of the application to himself, will be dismissed as inadmissible. 2. Purpose of Article 8(3) CTMR The unauthorised filing of the owner s trade mark by his agent or representative is contrary to the general obligation of trust underlying commercial co-operation agreements of this type. Such a misappropriation of the owner s mark is particularly harmful to his commercial interests, as the applicant will be in a position to exploit the knowledge and experience he acquired from his relationship with the opponent and thus unduly benefit from the owner s effort and investment. 174/2002 AZONIC/AZONIC (EN); 722/2002 FIRST DEFENSE/FIRST DEFENSE (EN) Thus, the purpose of Article 8(3) is to safeguard the legitimate interests of trade mark owners against the arbitrary appropriation of their trade marks, by granting them the right to prohibit registrations by agents or representatives that are applied for without their consent. 110/2001 DAAWAT/DAAWAT (EN); 2309/2001; 244/2001 GORDON AND SMITH/GORDON AND SMITH (EN); 174/2002 AZONIC/AZONIC (EN); 722/2002 FIRST DEFENSE/FIRST DEFENSE (EN) Article 8(3) is a manifestation of the principle that commercial transactions must be conducted in good faith. Article 51(1)(b) CTMR, which allows for the declaration of invalidity of a CTM on the ground that the applicant was acting in bad faith, is the general expression of this principle. However, the protection granted by Article 8(3) is narrower than the one afforded by Article 51(1)(b), because the applicability of Article 8(3) is subject to the fulfilment of a number of additional conditions laid down in this provision. Consequently, the fact that the applicant filed the application in bad faith will not be in itself sufficient for the purposes of Article 8(3). Thus, the opposition will be rejected if it is exclusively based on the bad faith of the applicant, or if this is the only circumstance that was established by the submitted evidence. Such a filing may only be sanctioned under Article 51(1)(b) by requesting the cancellation of the mark after it has been registered. 508/2000 EAST SIDE MARIO S/EAST SIDE MARIO S (EN), 110/2001 DAAWAT/DAAWAT (EN) Opposition Guidelines - Part 3, Article 8(3) CTMR Status: March 2004 Page 296

297 Unauthorised filing by agents of the TM owner II. ENTITLEMENT OF THE OPPONENT According to Article 42(1)(b) CTMR, the right to file an opposition on the grounds of Article 8(3) is reserved only for the proprietors of the earlier trade marks. This is in contrast both to Article 42(1)(a), which stipulates that oppositions based on Article 8(1) or 8(5) may also be filed by authorised licensees, and to Article 42(1)(c), which stipulates that for oppositions based on Article 8(4) the right to file an opposition is also extended to persons authorised by national law to exercise the relevant rights. It follows that, since the right to oppose a CTM application on the grounds of Article 8(3) belongs exclusively to the proprietors of the earlier trade marks, oppositions filed in the name of third persons, be they licensees or otherwise authorised by the relevant national laws, will be dismissed as inadmissible due to lack of entitlement. Likewise, if the opponent fails to prove that he was the rightful owner of the mark when the opposition was filed, the opposition will be dismissed without any examination of its merits due to lack of substantiation. The evidence required in each case will depend on the kind of right relied upon. 2065/2000 RHINO LININGS/RHINO LININGS (EN) The current proprietor may also invoke the rights of his predecessor in title, if the agency/representation agreement was concluded between the previous owner and the applicant. 401/1999 NORAXON(fig.)/NORAXON (EN) Opposition Guidelines - Part 3, Article 8(3) CTMR Status: March 2004 Page 297

298 Unauthorised filing by agents of the TM owner III. SCOPE OF APPLICATION 1. Kinds of marks covered Article 8(3) CTMR states that it applies to earlier trade marks that have been applied for as Community trade marks without their owner s consent. However, Article 8(2) does not apply to oppositions based on this ground, as it only enumerates the kinds of earlier rights on which an opposition may be entered under paragraphs (1) and (5) of the same article. It is therefore necessary to determine in more detail the kinds of rights on which an opposition based on Article 8(3) may be entered, both as regards their nature and their geographical origin. In the absence of any restriction in Article 8(3) and in view of the need to provide effective protection to the legitimate interests of the real owner, the term trade marks should be interpreted broadly and must be understood as also encompassing pending applications, since there is nothing in this provision restricting its scope exclusively to registered trade marks. For the same reasons unregistered marks or well-known marks within the meaning of Article 6 bis of the Paris Convention 1 also fall within the term trade marks in Article 8 (3). Consequently, both registered and unregistered trade marks are covered by this provision, to the extent of course that the law of the country of origin recognises rights of the latter kind. 401/1999 NORAXON(fig.)/NORAXON (EN), 2065/2000 RHINO LININGS/RHINO LININGS (EN) In contrast, the express reference to trade marks means that Article 8(3) does not apply to mere signs used in the course of trade, other than unregistered trade marks. Likewise, other kinds of intellectual property rights that could be used as a basis for an invalidity action cannot be invoked in the context of Article 8(3) either. 2065/2000 RHINO LININGS/RHINO LININGS (EN) It is clear from the wording of Article 8(3) that the trade mark on which the opposition is based must be earlier than the CTM application. Hence, the relevant point in time that should be taken into account is the filing or priority date of the contested application. The rules according to which the priority should be determined depends on the kind of right relied upon. If the earlier right has been acquired by registration, it is its priority date that should be taken into account for assessing whether it precedes the application, whereas if it is a user-based right, it must have been acquired before the filing date of the CTM application. In the case of earlier well-known marks, the mark must have become well-known by the time the CTMA is applied for. 1 For the applicability of Article 6 septies to well-known marks see the WIPO Guide to the application of the Paris Convention, by professor G.H.C. Bodenhausen, p. 127, with reference to the Actes de Lisbonne, pp. 681, 761. Opposition Guidelines - Part 3, Article 8(3) CTMR Status: March 2004 Page 298

299 Unauthorised filing by agents of the TM owner 508/2000 EAST SIDE MARIO S/EAST SIDE MARIO S (EN), 174/2002 AZONIC/AZONIC (EN), 722/2002 FIRST DEFENSE/FIRST DEFENSE (EN) 2. Origin of the earlier mark As Article 8(2) does not apply to oppositions based on Article 8 (3), it cannot serve to define the territorial extent of protection granted by Article 8(3). In the absence of any other reference in Article 8(3) to a relevant territory, it is immaterial whether the earlier trade mark rights reside in the Community or not. The practical importance of this provision lies precisely in the legal capacity it confers on holders of trade mark rights outside the Community to defend these rights against fraudulent filings, since owners of trade mark rights within the Community may rely on the rest of the grounds provided for in Article 8 to defend their earlier rights from such acts. Of course, Community trade marks or national marks, which provide a basis for opposition pursuant to Article 8 CTMR, also qualify as earlier marks that can be invoked as a basis for an Article 8 (3) opposition. On the other hand, it is not clear whether an implicit restriction of scope to trade marks rights held in a Paris Union country or WTO member must be read in this provision. It is often argued that since the territorial requirements of Article 6 septies (proprietorship of a mark in a Paris Union country) have not been included in the CTMR, the general rules of Article 5 CTMR should apply. 401/1999 NORAXON(fig.)/NORAXON (EN), 508/2000 EAST SIDE MARIO S/EAST SIDE MARIO S (EN) A further argument in support of this view could be drawn from Article 18 CTMR, according to which the owner can request the transfer of the registration to his own name. Hence, the argument runs, if the owner may demand the compulsory assignment of the mark to himself, he must also be a person capable of acquiring a CTM and thus, should fulfil the requirements of Article 5. However, even though Articles 8(3) and 18 CTMR have the same origin, they are independent provisions applicable in different circumstances. As Article 8(3) does not in any way restrict its application to rights originating from a specific territory, it is immaterial where in the world the rights of the proprietor reside. 244/2001 GORDON AND SMITH/GORDON AND SMITH (EN), 174/2002 AZONIC/AZONIC (EN), 722/2002 FIRST DEFENSE/FIRST DEFENSE (EN) Opposition Guidelines - Part 3, Article 8(3) CTMR Status: March 2004 Page 299

300 Unauthorised filing by agents of the TM owner IV. CONDITIONS OF APPLICATION Article 8(3) CTMR entitles trade mark proprietors to oppose the registration of their marks as Community trade marks, provided the following substantive requirements are met: 1. The applicant is an agent or representative of the proprietor of the mark; 2. The application is in the agent s name; 3. The application was filed without the owner s consent; 4. The agent or representative fails to justify his acts; 5. The marks are identical or similar. 1. Agent or representative relationship 1.1 Nature of the relationship In view of the purpose of this provision, which is to safeguard the legal interests of trade mark owners against the misappropriation of their trade marks by their commercial associates, the terms agent and representative should be interpreted broadly to cover all kinds of relationships based on some contractual arrangement where the one party is representing the interests of another, regardless of the nomen juris of the contractual relationship between the principal-proprietor and the CTM applicant. Thus, it is sufficient for the purposes of Article 8(3) CTMR that there is some agreement of commercial co-operation between the parties of a kind that gives rise to a fiduciary relationship by imposing on the applicant, whether expressly or implicitly, a general duty of trust and loyalty as regards the interests of the trade mark owner. It follows that Article 8(3) may also extend, for example, to licensees of the owner, or to authorised distributors of the goods for which the mark in question is used. 401/1999 NORAXON(fig.)/NORAXON (EN), 110/2001 DAAWAT/DAAWAT (EN), 174/2002 AZONIC/AZONIC (EN), 722/2002 FIRST DEFENSE/FIRST DEFENSE (EN) Given the variety of forms that commercial relationships may acquire in practice, a case-by-case approach is applied, focusing on whether the contractual link between the owner-opponent and the applicant is only limited to a series of occasional transactions, or if, conversely, it is of such a duration and content that could justify the application of Article 8(3). The material question should be whether it was the co-operation with the owner that gave the applicant the possibility to get to know and appreciate the value of the mark and incited him to subsequently try to register it in his own name. Nevertheless, some kind of agreement has to exist between the parties. If the applicant acts completely independently, without having entered into Opposition Guidelines - Part 3, Article 8(3) CTMR Status: March 2004 Page 300

301 Unauthorised filing by agents of the TM owner any kind of relationship with the proprietor, he cannot be considered an agent within the meaning of Article 8(3). 508/2000 EAST SIDE MARIO S/EAST SIDE MARIO S (EN) Thus, a mere purchaser or a client of the owner cannot amount to an agent or representative for the purposes of Article 8(3), since such persons are under no special obligation of trust to the trade mark owner. Interestingly enough, the initial draft of Article 6 septies PC also included the wording or client which was however expressly rejected by the Revision Conference of Lisbon as being too vague /2001 DAAWAT/DAAWAT (EN) It is irrelevant for the purposes of Article 8(3) whether an exclusive agreement exists between the parties, or just a simple, non-exclusive commercial relationship. 722/2002 FIRST DEFENSE/FIRST DEFENSE (EN) Article 8(3) also applies to analogous forms of business relationships that give rise to an obligation of trust and confidentiality between the trade mark owner and the professional, as is the case with legal practitioners and attorneys, consultants, trade mark agents etc. However, the legal representative or manager of the opponent s company cannot be considered as an agent or representative within the meaning of Article 8(3), given that such persons are not business associates of the opponent. The purpose of this provision is not to protect the owner from infringing acts coming from within his company. It may well be that such acts can be sanctioned under the general bad faith provisions. 522/2000 HARPOON/HARPOON (ES) 1.2. Form of the agreement It is not necessary that the agreement between the parties assumes the form of a written contract. Of course, the existence of a formal agreement between the parties will be of great value in determining exactly what kind of relationship exists between the parties. As mentioned above, the title of such an agreement and the terminology chosen by the parties should not be taken as conclusive. What counts is the kind of commercial co-operation established in substance and not its formal description. Even in cases where a written contract does not exist, it may still be possible to infer the existence of a commercial agreement of the kind required by Article 8(3), by reference to indirect indications and evidence, such as the commercial correspondence between the parties, invoices and purchase 2 Actes de Lisbonne, p.690 Opposition Guidelines - Part 3, Article 8(3) CTMR Status: March 2004 Page 301

302 Unauthorised filing by agents of the TM owner orders for goods sold to the agent, or credit notes and other banking instruments. Even dispute resolution agreements may be relevant, to the extent they give sufficient information about the past relationship between the parties. 244/2001 GORDON AND SMITH/GORDON AND SMITH (EN), 2309/2001; 2310/2001 APEX/APEX (EN), 722/2002 FIRST DEFENSE/FIRST DEFENSE (EN) Furthermore, circumstances such as sales targets imposed on the applicant, or payment of royalties, or production of the goods covered by the mark under license or help in the setting up of a local distribution network, will be strong indications in the direction of a commercial relationship of the type covered by Article 8(3). 244/2001 GORDON AND SMITH/GORDON AND SMITH (EN) On the other hand, the mere desire of the applicant to enter into a commercial relationship with the opponent cannot be considered as a concluded agreement between the parties. Prospective agents or representatives are not covered by Article 8(3). 508/2000 EAST SIDE MARIO S/EAST SIDE MARIO S (EN), 110/2001 DAAWAT/DAAWAT (EN) 1.3. Territorial scope of the agreement Even though the letter of Article 8(3) does not make any reference to the territorial scope of the agreement between the trade mark proprietor and his agent or representative, an inherent limitation to relationships covering the EU or a part thereof must be read in this provision. This is more in line with the economic considerations underlying Article 8(3), which are to prevent agents or representatives from unduly exploiting a commercial relationship covering a given territory, by filing an unauthorised application for the principal s mark precisely in that territory, that is, in the territory where the applicant will be more able to benefit from the infrastructure and know-how he possesses as a result from his prior relationship with the proprietor. Therefore, as the filing prohibited by Article 8(3) is an application for the acquisition of trade mark rights in the EU, the agreement must also concern the same territory. Hence, a purposive interpretation must be followed in this regard, according to which Article 8(3) only applies to agreements which cover the territory of the EU, whether in whole or in part. In practice, his means that world-wide or paneuropean agreements are covered by this provision, as are agreements extending to one or more member states, or only covering part of their territory, irrespective of whether they also include third territories. Conversely, agreements exclusively applying to third territories are not covered. Opposition Guidelines - Part 3, Article 8(3) CTMR Status: March 2004 Page 302

303 Unauthorised filing by agents of the TM owner 1.4. Relevant points in time The agent-representative relationship must have been established prior to the filing date of the CTM application. Therefore, it is immaterial whether after that time the applicant entered negotiations with the opponent, or made unilateral proposals with the purpose of becoming a representative or agent of the latter. 401/1999 NORAXON(fig.)/NORAXON (EN), 508/2000 EAST SIDE MARIO S/EAST SIDE MARIO S (EN), 244/2001 GORDON AND SMITH/GORDON AND SMITH (EN), 110/2001 DAAWAT/DAAWAT (EN) However, even if the agreement between the parties was formally concluded after the filing date of the application, it may still be possible to deduce from the evidence that the parties were already in some form of commercial cooperation before the signature of the relevant contract and that the applicant was already acting as the opponent s agent, representative, distributor or licensee. 2309/2001; 2310/2001 APEX/APEX (EN) On the other hand, the agreement between the parties does not have to be technically still in force when the application is filed. The reference to a filing made by an agent or representative should not be understood as a formal requirement that must be present at the time the CTM application is filed. Article 8(3) also applies to agreements that expired before the filing date of the CTM application, provided that the time that has lapsed is of such a duration that it permits to assume with good reason that the obligation of trust and confidentiality was still present when the CTM application was filed. This should be assessed on a case-by-case basis, and the decisive factor should be whether it is still possible for the applicant to take commercial advantage of his expired relationship with the trade mark proprietor by exploiting the know-how and contacts he acquired because of his position. 174/2002 AZONIC/AZONIC (EN) 722/2002 FIRST DEFENSE/FIRST DEFENSE (EN) 2. Application in the agent s name According to Article 8(3) CTMR, the trade mark applied for shall not be registered where the agent or representative applies for registration thereof in his own name. It will usually be easy to assess whether this requirement has been fulfilled, by comparing the name of the applicant with that of the person appearing in the evidence as the agent or representative of the owner. However, there may be cases where the agent or representative will try to circumvent this provision by arranging for the application to be filed by a third person, whom he either controls, or with whom he has entered into some form of understanding to that effect. In such cases it is justified to adopt a more Opposition Guidelines - Part 3, Article 8(3) CTMR Status: March 2004 Page 303

304 Unauthorised filing by agents of the TM owner flexible approach. Thus, if it is clear that because of the nature of the relationship between the person filing the application and the agent, the situation is effectively the same as if the application had been filed by the agent himself, it is still possible to apply Article 8(3), notwithstanding the apparent discrepancy between the applicant s name and the name of the owner s agent. Such a case could arise if the application is filed not in the name of the agent s company, but in the name of a natural person that shares the same economic interests as the agent, as for example its president, vicepresident or legal representative. Given that in this case the agent or representative could still benefit from such a filing, it should be considered that the natural person is bound by the same limitations as the company. 174/2002 AZONIC/AZONIC (EN) Moreover, if the person filing the contested application had also signed the agency agreement on behalf of the company, this would have to be considered a strong argument in favour of the application of Article 8(3), since in such a case the applicant cannot possibly deny a direct knowledge of the relevant prohibitions. Similarly, if an agency agreement contained a clause holding the management of the company personally responsible for the observance of the contractual obligations undertaken by the agent, this would also have to be considered a further indication that the filing of the application is covered by the prohibition of Article 8(3). 174/2002 AZONIC/AZONIC (EN) A similar case arises where the agent or the representative and the applicant are distinct legal entities, but the evidence shows that they are controlled, managed or run by the same natural person. For the reasons given above it is appropriate to lift the corporate veil and apply Article 8(3) also to these cases. 3. Application without the owner s consent Even though the absence of the proprietor s consent is a necessary condition for the application of Article 8(3), the opponent does not have to submit evidence which shows that the agent was not permitted to file the CTM application. A mere statement that the filing was made without his consent is generally sufficient. This is because the opponent cannot be expected to prove a negative fact, such as the absence of consent. In these cases the burden of proof is reversed and it is up to the applicant to prove that the filing was authorised, or to give some other justification for his acts. In view of the need to provide effective protection to the legitimate proprietor from unauthorised acts of his agents, the application of Article 8(3) should be denied only where the proprietor s consent is sufficiently clear, specific and unconditional. Opposition Guidelines - Part 3, Article 8(3) CTMR Status: March 2004 Page 304

305 Unauthorised filing by agents of the TM owner Thus, even if the owner has expressly authorised the filing of the CTM application, his consent cannot be considered sufficiently clear if he has not also explicitly specified that the application may be in the name of the agent. 244/2001 GORDON AND SMITH/GORDON AND SMITH (EN) Likewise, even if the proprietor has expressly authorised the filing of a CTM application, his consent cannot be considered specific enough for the purposes of Article 8(3) if there is no indication of the specific signs which the applicant has permission to file as Community trade marks. 722/2002 FIRST DEFENSE/FIRST DEFENSE (EN) It will be generally easier to assess whether the filing was authorised by the owner where the conditions under which an agent or representative may apply for a CTM application are adequately regulated by contract, or are given by other kinds of direct evidence (letters, written representations etc.) In most cases, such evidence will be sufficient to show whether the owner has given his express consent, or if the applicant exceeds the limits of his authorisation. In other cases a contract will either not exist, or it will be inadequate on the subject. Although the wording of Article 8(3) is in principle broad enough to also cover cases of tacit or implied consent, such a consent should only be inferred if the evidence is sufficiently clear as to the intentions of the owner. If the evidence is completely silent as to the existence of an express or implied authorisation, the lack of consent should be generally presumed. Even if there are indirect indications and evidence pointing to an implied consent, any ambiguity or doubt should be interpreted in favour of the opponent, as it will usually be quite difficult to assess whether such a consent is sufficiently clear and unequivocal. For example, the fact that the proprietor tolerated unauthorised applications in the name of the agent in third jurisdictions cannot create legitimate expectations on the part of the applicant that the owner will not object to the filing of a CTM application either. 244/2001 GORDON AND SMITH/GORDON AND SMITH (EN) 4. Absence of justification on the part of the applicant Opposition Guidelines - Part 3, Article 8(3) CTMR Status: March 2004 Page 305

306 Unauthorised filing by agents of the TM owner As mentioned above, since it is not possible for the opponent to prove the absence of consent, the burden of proof is reversed and it is up to the applicant to show that the filing of the application was authorised by the owner. Although Article 8(3) treats the lack of the owner s consent and the absence of a valid justification on the part of the applicant as two separate conditions, these requirements largely overlap to the extent that if the applicant establishes that the filing of the application was based on some agreement or understanding to this effect, then he will have also provided a valid justification for his acts. In addition, the applicant may invoke any other kind of circumstance showing that he was justified to file the CTM application in his own name. However, in the absence of evidence of direct consent only exceptional reasons are accepted as valid justifications, in view of the need to avoid a violation of the owner s legitimate interests without sufficient indications that his intention was to allow the agent to file the application in his own name. For example, it could be possible to infer that the owner has tacitly consented to the filing of the application if he does not react within a reasonable period of time after having been informed by the applicant that he intends to apply for a CTM in his own name. However, even in such a case it will not be possible to assume that the application has been authorised by the owner if the agent had not made sufficiently clear to him in advance in whose name he would file the application. 244/2001 GORDON AND SMITH/GORDON AND SMITH (EN) Another case of valid justification could be if the proprietor causes his agent to believe that he has abandoned the mark, or that he is not interested in obtaining or maintaining any rights in the territory concerned, for example by suspending the use of the mark over a relatively long period of time. The fact that the proprietor does not want to spend money on a registration of his trade mark, does not give the agent a right to act on his own initiative, as the proprietor might still have an interest in using his trade mark in the territory although it is not registered. Such a business decision cannot be taken in itself as a sign that the owner has given up the rights in his mark. 244/2001 GORDON AND SMITH/GORDON AND SMITH (EN), 174/2002 AZONIC/AZONIC (EN) Justifications exclusively linked to applicant s economic interests, such as the need to protect his investment in setting up a local distribution network and promoting the mark in the relevant territory, cannot be considered valid for the purposes of Article 8(3). Nor can the applicant successfully argue in his defence that he is entitled to some financial remuneration for his efforts and expenditure in building-up goodwill for the mark. Even if such a remuneration were well deserved or is expressly stipulated in the agency agreement, the applicant cannot use the Opposition Guidelines - Part 3, Article 8(3) CTMR Status: March 2004 Page 306

307 Unauthorised filing by agents of the TM owner registration of the mark in his own name as a means of extracting money from the opponent or in lieu of financial compensation, but should try to settle his dispute with the owner either by way of agreement or by suing for damages. 244/2001 GORDON AND SMITH/GORDON AND SMITH (EN), 2309/2001; 2310/2001 APEX/APEX (EN) 5. Applicability beyond identical signs - goods and services Article 8(3) provides that a CTM application will not be registered where an agent or representative of the proprietor of the mark applies for registration thereof in his own name. Such an explicit reference to the principal s trade mark gives the prima facie impression that the CTM applied for must be the same as the earlier mark. Hence, a literal interpretation of Article 8(3) CTMR would lead to the conclusion that its application is only possible where the agent or representative intends to register a mark identical with that of the proprietor. It should also be noted that the text Article 8(3) does not make any reference to the goods and services for which the application has been filed and for which the earlier mark is protected, giving thus no guidance as to what the exact relationship between the respective goods and services should be for it to apply. However, applying Article 8(3) exclusively to identical marks for identical goods or services would render this provision largely ineffective, as it would allow the applicant to escape its consequences by merely importing slight modifications either to the earlier mark or to the specification of goods and services. In such a case, the interests of the owner would be seriously prejudiced, especially if the earlier mark is already in use and the variations made by the applicant are not significant enough to rule out confusion. What is more, if the application is allowed to proceed to registration despite its similarity to the earlier mark, the applicant will be in a position to prevent any subsequent registration and/or use of the earlier mark by the original proprietor within the EU, by relying on Articles 8(1) or 9(1) of the CTMR, or the equivalent provisions of national law. Thus, in view of the necessity to effectively protect the legitimate proprietor against unfair practices by his representatives, a restrictive interpretation of Article 8(3) must be avoided. Article 8(3) CTMR must therefore be applied not only where the respective signs are identical, but also where the sign applied for by the representative or agent essentially reproduces the earlier mark with slight modifications, additions or deletions, which do not substantially affect its distinctiveness 3. 3 The need for a liberal interpretation was also recognised by the Revision Conference that led to the adoption of Article 6 septies PC. (Actes de Lisbonne, p. 681.) Opposition Guidelines - Part 3, Article 8(3) CTMR Status: March 2004 Page 307

308 Unauthorised filing by agents of the TM owner The following are examples of conflicting signs where the Opposition Division considered that Article 8(3) is applicable: Earlier Mark CTM Application NORAXON APEX FIRST DEFENSE 401/1999 NORAXON (fig.) / NORAXON (EN), /2001 APEX / APEX (fig.) (EN), 722/2002 FIRST DEFENSE / FIRST DEFENSE (EN) For the same reasons, Article 8(3) does not only cover cases where the respective specifications are strictly identical, but it also applies where the goods and services in conflict are closely related, or equivalent in commercial terms. In other words, what finally counts is that the goods or services of the applicant may be perceived by the public as authorised products, the quality of which is still somehow guaranteed by the opponent. Opposition Guidelines - Part 3, Article 8(3) CTMR Status: March 2004 Page 308

309 OPPOSITION GUIDELINES Part 4 Rights under Article 8(4) CTMR Opposition Guidelines - Part 4, Article 8(4) CTMR Status: March 2004 Page 309

310 Rights under Article 8 (4) CTMR PART 4: RIGHTS UNDER ARTICLE 8 (4) CTMR 5.1 INTRODUCTION CTMR 8 (2), (4), 42, 52 (1), 106 Article 8 (4) CTMR provides that, in addition to the earlier trade marks specified in Article 8 (2) CTMR, specific non-registered earlier rights protected at Member State level, i.e. non-registered trade marks and other signs used in the course of trade (hereinafter also referred to as business identifiers ) of more than mere local significance, can be invoked in an opposition, provided that such rights confer on their proprietors the right to prohibit the use of a subsequent trade mark. Pursuant to Article 52 (1) (c) CTMR, the rights referred to in Article 8 (4) CTMR can also be invoked in a request for a declaration of invalidity directed against a registered Community trade mark as a relative ground for invalidation. This part of the Guidelines deals with the earlier rights falling under Article 8 (4) CTMR only as regards opposition proceedings. References to invalidity proceedings are occasionally included for purposes of clarification and delimitation. 5.2 APPLICABLE RULES CTMR 8 (4) Article 8 (4) CTMR reads: Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the law of the Member State governing that sign: (a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark; (b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark. (Emphasis added). Opposition Guidelines - Part 4, Article 8(4) CTMR Status: March Page

311 Rights under Article 8 (4) CTMR CTMR 52 (2) In contrast to Article 8 (4) CTMR, specific other earlier rights cannot be invoked in an opposition proceedings. Rather, they can be invoked only, after registration of the CTM concerned, by filing a request for a declaration of invalidity. Article 52 (2) CTMR reads: A Community trade mark shall also be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where the use of such trade mark may be prohibited pursuant to the national law governing the protection of any other earlier right, and in particular: (a) a right to a name; (b) a right of personal portrayal; (c) a copyright; (d) an industrial property right. (Emphasis added). CTMR 74 (1) As concerns the procedure, Article 74 (1) CTMR is applicable. This provision states that In proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. (Emphasis added). Therefore, the onus is on the party concerned to provide the Office with all the information necessary for the decision, and as regards rights falling under Article 8 (4) CTMR specifically, with all the necessary information, including the applicable law, concerning the existence of such right and its scope of protection. Details of onus are dealt with in par. 5.4 below CONDITIONS OF ARTICLE 8 (4) CTMR Types of rights falling under Article 8 (4)CTMR CTMR 8 (4) The types of rights falling under Article 8 (4) CTMR are non-registered trade marks and other signs used in the course of trade. The latter are exclusive rights of a similar character as trade marks and include, for example, trade names and company names (corporate names), other business designations like establishment or store names, titles of publications or similar works, as well as any Opposition Guidelines - Part 4, Article 8(4) CTMR Status: March Page

312 Rights under Article 8 (4) CTMR other similar exclusive right falling within the same category or type of right. The common characteristics of these rights are that they are based on use rather than on registration, that they are trade or business-related and thus outside of the sphere of mere individual or personal rights, that they serve as distinguishing signs in the course of trade, unlike patents or copyrights or design rights, which protect technical or artistic achievements or the appearance as such, and that they are exclusive rights conferring on their proprietors an ownership or at least an ownership-like position. CTMR 8 (4), 52 (2) A European standard applies with respect to the assessment of which kind of right can be invoked under Article 8 (4) CTMR, and which cannot. This follows primarily from the differentiation made in the Community Trade Mark Regulation between Article 8 (4) Article 52 (2) CTMR. While all Article 8 (4) rights fall within the category of industrial property rights, not all industrial property rights, even if they may have some similarity with the Article 8 (4) rights, automatically fall within Article 8 (4) CTMR. Industrial property rights within the meaning of Article 52 (2) (d) CTMR thus cover industrial property rights other than those set out in Article 8 CTMR, for instance, design rights. Since this distinction is contained in the CTMR, the qualification under the respective national law is not decisive, and it is immaterial whether the national law governing the respective sign or industrial property right treats both types of rights in one and the same law, or whether it grants the procedural right to file an opposition to the registration of a national trade mark to the holders of such rights. These Guidelines contain in their Annex a table which lists, with respect to all Member States, the rights falling under Article 8 (4) CTMR, together with their essential characteristics. This list will be used by the Opposition Division and also by the Cancellation Division as a checklist for examining Article 8 (4) cases. Opposition Guidelines - Part 4, Article 8(4) CTMR Status: March Page

313 Rights under Article 8 (4) CTMR The list will be updated continuously on the basis of legislative developments and the case law of the European Court of Justice and the Court of First Instance and developments within the Office, including its Boards of Appeals, as well as at national level Individual types of rights Non-registered trade marks Non-registered trade marks exist in almost all the Member States. The rules and conditions governing acquisition of rights under the relevant national law vary, from simple use to use having established a reputation. Their scope of protection is also not uniform, although generally quite similar to the scope of protection under the rules in the CTMR as concerns registered trade marks Other signs CTMR 8 (4), 52 (2) As regards other signs used in the course of trade (business identifiers), national law applies to determine whether a particular right is provided for under the national law, whether its holder is entitled to prohibit the use of a subsequent trade mark, and what the conditions are for the existence of the right, e.g. regarding the kind and intensity of the required use. The criteria of Article 8 (4) CTMR apply to determine whether the right relates to a sign used in the course of trade and is not a right falling under Article 52 (2) CTMR (cf. par above). This means in particular that the various categories or classification systems applied at national level cannot be accepted without further examination. For instance, where the respective national law considers titles of printed media as other industrial property rights (which is the wording of Article 52 (2) CTMR), but protects such signs as business identifiers and confers on the owners of such rights the right to prohibit the use of a later trade mark, they will be considered as a sign within the meaning of Article 8 (4) CTMR. In order to be qualified as signs used in the course of trade within the meaning of Article 8 (4) CTMR, the signs must be businessrelated. Where, for instance, national law vests rights in a specific proprietor with respect to specific signs or symbols, which have no relation with trade or business and are thus not at all similar to trade marks or Opposition Guidelines - Part 4, Article 8(4) CTMR Status: March Page

314 Rights under Article 8 (4) CTMR business identifiers in general, such signs would be excluded from the application of Article 8 (4) CTMR. Such signs may, nevertheless, to the extent that they may be qualified as industrial property rights, be considered as other industrial property rights within the meaning of Article 52 (2) CTMR. As regards registration, most national business identifiers falling within the category of earlier rights within the meaning of Article 8 (4) CTMR will be non-registered signs. However, the mere fact that the sign is also registered in accordance with the requirements of the respective national law, neither bars it from being invoked under Article 8 (4) CTMR, nor is it in itself sufficient for the application of this provision. The sign must have been used, and this applies independently of whether national law allows prohibition of a subsequent trade mark on the basis of the registration of a business identifier alone, i.e. without any requirement relating to use. Hereafter an indication is given of the various types of rights involved Trade names Trade names are the names used by enterprises to identify the enterprise as such, as distinguished from trade marks identifying the goods or services produced or marketed by the enterprise. The trade name is not necessarily identical with the corporate name or commercial name as entered in a commercial register or similar register. Trade names are protected as exclusive rights in all Member States. Pursuant to Article 8 of the Paris Convention trade names enjoy protection without any requirement of registration. If national legislation requires registration for national trade names, the respective provision is not applicable by virtue of Article 8 of the Paris Convention with respect to trade names held by a national of a Member State of the Paris Convention. This applies as well in respect of nationals of a member of the WTO Agreement. As regards the application of Article 8 (4) CTMR to trade names, where the trade name is invoked on the basis of the law of one of the Member States where a registration is a condition for the enforcement of rights in a trade name, the Office will apply this requirement where the Member State and the nationality of the opponent are the same, but will not apply this requirement in all other cases because this would violate the provisions of Article 8 of the Paris Convention. Opposition Guidelines - Part 4, Article 8(4) CTMR Status: March Page

315 Rights under Article 8 (4) CTMR Article 8 (4) CTMR requires that actual use be shown, even if national law vests in the holder of such trade name the right to prohibit the use of a subsequent trade mark on the basis of registration alone Corporate names A corporate name or company name is the official designation of an undertaking, in most cases registered on the respective national commercial register. Article 8 (4) CTMR requires that actual use be shown, even if national law vests in the holder of such name the right to prohibit the use of a subsequent trade mark on the basis of registration alone. If under national law registration is a prerequisite for protection, registration must be shown as well, as otherwise there would be no right in an unregistered corporate name in the first place that the opponent could invoke Other business identifiers The general category of other signs includes other types of business identifiers. The definition of what is a business identifier is to be made according to a European standard, as explained earlier. In order for a sign to be eligible for protection under Article 8 (4) CTMR, it must also be considered a business identifier under national law. Thus, there are, based on a comparative review of the laws of the Member States, a variety of rights that fall within Article 8 (4) CTMR Titles CTMR 8 (4), 52 (2) (c) Titles of magazines and other publications, or titles of similar categories of works such as films, television series etc. fall under Article 8 (4) CTMR if they, under the applicable national law, are protected as business identifiers irrespective of whether they are also protected under copyright law. This applies irrespective of whether the copyright in a title of a work can be invoked under the respective national law against a subsequent trade mark. It follows from the criterion used in the course of trade that the respective title must have been used in the course of trade. This will normally require that the work to which the title relates must have been placed on the market. Where the title relates to a service (such as television program), that service must have been made available. There will however be circumstances where pre-use advertising may be sufficient to create rights, and where such advertising will constitute use within the meaning of Article 8 (4) CTMR. Opposition Guidelines - Part 4, Article 8(4) CTMR Status: March Page

316 Rights under Article 8 (4) CTMR Geographical indications CTMR 8 (4), 142 Geographical indications are indications of the geographical origin of goods or services in a particular political or topographical region or place, such as in a country, region, or locality. Geographical indications may take the form of appellations of origin, where there exists a particular link between the geographical origin and the quality or other characteristics of the product or service, or of simple geographical indications where such a special link between origin and quality or reputation is not present. Geographical indications owe their protection either to a registration or similar recognition system or to their use in the course of trade. The protection systems in the Member States vary widely. In addition to protection at the national level, there are geographical indications protected at Community level pursuant to specific legislation for the relevant sector, especially in the sector of wines and alcoholic beverages (spirits). At Community level there exists protection for registered designations of of origin and geographical indications pursuant to Regulation 2081/92. As set out in Article 142 CTMR, this Regulation is not affected by the Community Trade Mark Regulation. Further, some Member States are party to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of 1958 (as revised at Stockholm 1967, and as amended on September 28, 1979). Under some legal systems, geographical indications are not business signs within the meaning of Article 8 (4) CTMR, because there are no individual rights that are vested in those entitled to use a geographical indication. In these systems, the law relating to the protection of geographical indications of origin is part of the law providing protection of competitors and consumers against unfair or misleading business practices. It does not matter whether these indications are, under national law, protected against misleading or unfair use under trade mark law, the law relating to unfair competition, or any other set of provisions. An example for lex specialis in this respect is the German Regulation governing the use of the name Solingen for specific goods ( Verordnung zum Schutz des Namens Solingen vom 16. Dezember 1994, Bundesgesetzblatt Teil I Nr. 91 vom , S. 3833). Geographical indications protected under such rules cannot be invoked under Article 8 (4) CTMR. The mere fact that the respective national law allows an action to be brought against illegitimate use of such a geographical indication is not sufficient because no individual Opposition Guidelines - Part 4, Article 8(4) CTMR Status: March Page

317 Rights under Article 8 (4) CTMR exclusive right is vested in them. There are within the European Community other legal systems where the applicable national law expressly vests in a natural person or an association an exclusive right in a geographical indication, including the right to prohibit the use of a subsequent trade mark on the basis of an entitlement to an indication of origin. When this is the case such entitlement will be considered as a right to a business identifier within the meaning of Article 8 (4) CTMR. The Office will apply this in cases where national legislation is based on Article 8 (2) of the Lisbon Agreement. Appellations of origin protected under the Lisbon Agreement are registered, albeit on request by the industrial property office of a State party to the agreement, in the name of a person, which can be a natural person or a public or private legal entity (Article 5 (1) of the Lisbon Agreement). Article 8 of the Lisbon Agreement provides that legal action required for ensuring the protection of appellations of origin protected under the Agreement may be taken under the provisions of the national legislation either at the instance of the competent national authority or at the request of the public prosecutor, or by any interested party. The registered owner of such an appellation will always be entitled to undertake such action. Designations of origin and geographical indications registered under Regulation 2081/92 fall under Article 8 (4) CTMR. While they are based on Community law, and their protection is governed by Article 13 and 14 of that Regulation, the applicability of that Regulation is expressly provided for in Article 142 CTMR. Also, these indications are protected directly in each of the Member States pursuant to measures adopted for their protection, and they are therefore also protected pursuant to national law. CTMR 8 (2), (4), 64 (2) The above does not apply to collective marks consisting of a geographical indication registered in the name of an association. Such a mark constitutes a registered trade mark which can be invoked under Article 8 (2) (a) (i), (ii) or (iii) CTMR Use in the course of trade The criterion used in the course of trade contained in Article 8 (4) CTMR has to be interpreted as a specific requirement under European law and has as its consequence that the Office will request proof of actual use of the invoked sign, in the absence of which the notice of opposition will be rejected. This applies irrespective of whether the national right is based on registration (cf. par above). The use must be genuine in the same sense that use of a Opposition Guidelines - Part 4, Article 8(4) CTMR Status: March Page

318 Rights under Article 8 (4) CTMR Community trade mark (or a national trade mark) must be genuine in order to be invoked against a later trade mark or avoid revocation. In addition, the use must be of such a nature and intensity as to fulfil the conditions of the coming into existence of the relevant right under national law. For example, national law may require an unregistered mark to be used to such an extent that market recognition or reputation has been achieved. As regards evidence and proof of use, reference is made to par Local significance CTMR 8 (4), 107 Rights falling under Article 8 (4) CTMR may only be invoked if they are of more than mere local significance. This requirement applies for all the rights within the scope of Article 8 (4) CTMR, i.e. both to unregistered trade marks and to other business identifiers. The proprietors of rights of a mere local significance retain their exclusive rights under the applicable national law pursuant to Article 107 CTMR. The question whether an unregistered trade mark or a business identifier is of more than mere local significance will be answered by applying a uniform European standard. The notion of local significance in Article 8 (4) CTMR has to be interpreted as a criterion of European law. It covers a wider scope than it might have under national law. An individual assessment must be made in view of the particularities of each case. In general, neither the territory of a city alone, even a big one, is of more than mere local significance, and nor is a regional district or province. The assessment cannot be based on geographical criteria alone. Rather, what is important is the economic dimension of the use of the sign. Consideration will be given, and the evidence must relate, to these elements: to the intensity of use (sales made under the sign); to the length of use; to the spread of the goods or services for which the sign is used Opposition Guidelines - Part 4, Article 8(4) CTMR Status: March Page

319 Rights under Article 8 (4) CTMR (where are the customers); to the advertising under such sign and the media used for such advertising including the distribution of such advertising. For example, in many cases a decisive element will be the intensity of the marketing. Where, for instance, it can be shown that a sign was used continuously over several years in two big cities of a Member State, and provided that substantial sale was made, partially including sale to other parts of that state, this may, in principle, be considered as being of more than local significance. In this respect, both geographic extent and population will be among the criteria to be taken into account. Where national law vests in the holder of an unregistered mark or another business identifier a nationwide right to prohibit a subsequent trade mark even if the sign is established on a local or regional basis only, such sign does not automatically qualify as an earlier right within the meaning of Article 8 (4) CTMR. It will do so only if the European criteria relating to more than mere local significance are complied with. However, evidence of nation-wide enforcement of the protection under the applicable law may be taken as an indication of the existence of a right of more than mere local significance. Notwithstanding that the criterion local shall be assessed according to European standards, only facts relating to one and the same Member State can be taken into account. This follows from the fact that Article 8 (4) CTMR deals with national law, the scope of which is the respective territory. Thus, where a mark or another sign has cross-border significance, a differentiation must be made with respect to each national legislation concerned, i.e. the two or more parts cannot be added up. If none of the geographical parts of the use of the business identifier amounts, under each of the respective national laws, to the requisite intensity necessary to obtain a right to prohibit a subsequent national trade mark, such sign has to be ruled out already on those grounds. Even if such right to prohibit should exist, for Article 8 (4) to apply still the more than mere local significance hurdle must be passed Earlier right CTMR 8 (2), (4), 26, 29, 31, 34 The right invoked under Article 8 (4) CTMR must be earlier than the CTM application. Opposition Guidelines - Part 4, Article 8(4) CTMR Status: March Page

320 Rights under Article 8 (4) CTMR In order to determine which of the conflicting rights is earlier, the relevant dates on which the rights were obtained must be compared. For the CTM application, this is the filing date or any priority date validly claimed (hereinafter the CTM date ). Seniority claims, even if these relate to the Member State where the other earlier right is claimed to exist, are not relevant. As regards the right falling under Article 8 (4) CTMR, the relevant date of acquisition of exclusive rights under the national law is decisive. Where under the national law mere use is sufficient, this must have begun before the CTM date. Where recognition in the trade or reputation are required, these must have been acquired before the CTM date. Where these conditions are fulfilled only after the CTM date, the opposition will have to be rejected Scope of protection CTMR 8 (1), (4), 51 (1) Earlier rights falling under Article 8 (4) CTMR are protected only if they confer on their proprietors under the applicable national law the right to prohibit the use of a later trade mark. This requires a finding that under the applicable national law rights of the type involved, in the abstract, are exclusive rights enforceable by means of an injunction vis-à-vis later marks and a finding that in the actual case under consideration the conditions for obtaining such injunctive relief, if the mark that is the subject of the opposed CTM application would be used in the territory in question, are present (scope of protection). As regards the first issue protection in the abstract this will generally be answered by using the list in the Annex, where the applicable earlier rights are listed. As regards the second question, this will also have to be answered according to the applicable national law. The Community Trade Mark Regulation does not contain any rules on the scope of protection of unregistered trade marks or other rights. Neither do other Community instruments. The law relating to such rights is not harmonized. Thus, applying a European standard is not possible. Applying the relevant national law also maintains the requisite concordance between the right to register and the right to use. Thus, the Office will apply the laws of the Member States. Opposition Guidelines - Part 4, Article 8(4) CTMR Status: March Page

321 Rights under Article 8 (4) CTMR The difficulties of applying national law should not be overestimated. Firstly, the list in the Annex provides appropriate indications, which will be completed in the course of time. Secondly, comparative law research has shown that for many if not most of these rights criteria are applied which are quite similar to those applied in solving conflicts between trade marks, namely likelihood of confusion or damage to reputation or distinctiveness. For example, unregistered marks are generally protected against subsequent marks according to the same criteria that are applicable to conflicts between registered marks, namely identity or similarity of the signs, identity or similarity of the goods or services, and the presence of likelihood of confusion. In these cases, the criteria developed by the courts and by the Office for applying Article 8 (1) CTMR may easily be transported into Article 8 (4) CTMR. In any event, and even where the applicable national law provides a scope of protection for unregistered trade marks which is different from the criteria found in Article 8 (1) CTMR, the scope of protection of the earlier right invoked follows from national law. If, for example, the applicable national law grants protection to unregistered marks also for dissimilar goods and services under certain conditions, such national rules apply under Article 8 (4) CTMR. In other cases where, pursuant to national legislation, a business identifier which has not yet been established on the market may nevertheless provide a basis for prohibiting the use of a subsequent trade mark if certain personal requirements are met (the sign must not only have been used prior to the subsequent mark, the holder of the trade mark must also have been aware of the existence of the earlier sign when applying for trade mark registration), such sign cannot be invoked at Community level even if it can be shown that the applicant for the Community trade mark had been aware of it when applying for the Community trade mark. The national right to prohibit a subsequent trade mark in such a case is not erga omnes, it is inter-personal, and amounts in essence to a relief against a subsequent application made in bad faith. These cases, while outside the scope of Article 8 (4) CTMR, may fall under Article 51 (1) (b) CTMR. 5.4 EVIDENCE AND PROOF; STANDARD OF PROOF CTMR 74 (1), 76 IR 15 (2), 16, 20 (2) Pursuant to Article 74 (1) CTMR, cited above under par. 5.2, in all inter partes cases it is for the party relying on a particular proposition or consequence to provide the Office with the necessary allegations, facts, and arguments which are necessary to support the conclusions sought. Opposition Guidelines - Part 4, Article 8(4) CTMR Status: March Page

322 Rights under Article 8 (4) CTMR It is the national law of the country where the right is supposed to be protected which determines whether it is an exclusive right, whether it was validly acquired, and what scope of protection it has. As regards the facts necessary to establish the legal consequences, for example actual use or reputation, the general principle of Article 74 (1) CTMR is applicable from the beginning. These facts relate to such items as the requirements for obtaining protection (including use and reputation) (national standard) the requirements of use (European standard) the requirements for protection being of more than mere local significance (European standard) the scope of protection (similarity of signs and goods or services, likelihood of confusion) (national standard). As regards the law of the Member States applicable by virtue of Article 8 (4), the Office will treat this also as an issue of fact. The Office is not in a position to determine with sufficient accuracy on its own motion what the law relating to Article 8 (4) rights is in all the Member States. Treating this as an issue of fact, subject to proof by the party alleging such right, is in accordance with the approach of the courts in the Member States with respect to foreign law under their private international law principles. Thus, as regards questions of law, i.e. the rules and norms of the respective national law applicable to the specific case, the Office will generally require the opponent to provide the necessary elements for the Office to take a decision. It is only when such elements have already been previously established by the Office, such as through inclusion in the list in the Annex, that such proof will not be necessary. The parties to the procedure are, however, free to provide evidence that the information contained in the list or otherwise established by the Office is no longer correct or up to date. As regards proof of the legal situation, and to the extent that this information is not already included in the annex, the opponent will have to provide the necessary legislation in force. Where the opponent relies on national case law to prove his case, he will have to provide the Office with this case law in sufficient detail, such as by providing a copy of the decisions invoked and not Opposition Guidelines - Part 4, Article 8(4) CTMR Status: March Page

323 Rights under Article 8 (4) CTMR only by reference to a publication somewhere in the legal literature. Where cases involving the same or sufficiently similar conflicts have already been adjudicated by a national jurisdiction (whether trade mark authority or court), this may suffice to demonstrate both the existence of the right and its scope of protection. As regards the procedure, European law is applied in accordance with the principle that procedural matters are dealt with by the lex fori. This includes the means of proving actual use; the Office cannot apply national law in this regard. Also as regards the standard of proof, i.e. the degree of conviction or preponderance of evidence required, the Office will apply the same standard as in all other opposition proceedings (in particular, as in respect of proof of use pursuant to Article 43 (2) CTMR). The Office will as a general rule take its decisions in a written proceedings without oral hearing and thus without the examination of witnesses and other similar means of evidence. Opposition Guidelines - Part 4, Article 8(4) CTMR Status: March Page

324 Member State National rights which constitute earlier rights in the sense of Article 8 (4) CTMR Austria A. Unregistered TM - Unregistered TM which has acquired a certain degree of recognition in the course of trade ( Verkehrsgeltung ) 31, AT-TML Acquisition through use which has led to a recognition by the relevant public that the sign is a mark of the claimant ("Verkehrsgeltung"). Right to prohibit use of subsequent (registered) trade mark provided that unregistered mark, at the date of application for subsequent TM, was, to a certain degree, known to the relevant public ( als Kennzeichen gegolten hat ) and provided that the subsequent TM had not been used prior to application for the same period as an unregistered mark. B. Trade name/other business identifier - Trade names (the firm of an enterprise), special designations of enterprises and special designations of printed works Acquisition through use. 32, AT-TML, 9 (1), (3) of the Law Against Unfair Competition To the notion of a special designation of an enterprise are assimilated ("stehen gleich") such business signs ("Geschäftsabzeichen") or other signs designated to distinguish the business from other businesses (including the get-up or packaging of goods) which, within the relevant public, are considered to be the distinguishing sign ("Kennzeichen") of that business. Such other signs are acquired through use which has led to a recognition by the relevant public that the sign is a sign of the claimant ("Verkehrsgeltung"). 9 (3) of the Law Against Unfair Competition Right to prohibit use of subsequent (registered) trade mark provided that there is a risk of confusion. Benelux A. Unregistered TM Unregistered trade marks are not recognised under the uniform Benelux law on Trade Marks. Article 12A, BX-TML B. Trade name/other business identifier General remark: In respect of the Benelux territory, each state must be considered separately. Belgium: - Trade name (nom commercial) Article 12B, Uniform Benelux Law on Marks, Article 93 of 'loi du 14 juillet 1991 sur les pratiques du commerce et sur l'information et la protection du consommateur' and Article 1382 of the 'Code Civil' (Civil Code). Acquisition of trade name from its first use in trade. Protection limited to geographical area where the trade name is used. Right to prohibit use of subsequent (registered) trade mark.

325 Member State National rights which constitute earlier rights in the sense of Article 8 (4) CTMR - Company name (dénomination sociale) Article 12B, BX-TML and Article 65 of 'Code de sociétés du 7 mai 1999' Acquisition of protection as a company name, in principle, from the date of the establishment of the company. Protection extends to the whole national territory. Right to prohibit use of subsequent (registered) trade mark. Luxembourg: - Trade Name (nom commercial)/ company name (dénomination sociale) Article 12B, BX-TML and Article 17, alinéa f, of loi du 27 novembre 1986 réglementant certaines pratiques commerciales et sanctionnant la concurrence déloyale. Right to prohibit use of subsequent (registered) trade mark. Netherlands: - Trade name Article 12B, BX-TML and Law of 5 July 1921 on trade names (Handelsnaamwet) and Article 6:162 of the Dutch Civil Code (Burgerlijk Wetboek). Acquisition: Right to a trade name is acquired by its use; there is a possibility to have the trade name registered with the Trade Register at the Chamber of Commerce, but there is no obligation to do so, and doing so does not provide any right. No particular requirement that the trade name be distinctive and non-descriptive. Right to prohibit use of subsequent (registered) trade mark where there is a risk of confusion. Denmark A. Unregistered TM - TM by commencement of use 3 (1)(ii), DK-TML Acquisition: Right to unregistered trade mark by commencement of its use in Denmark. Right to prohibit use of subsequent (registered) trade mark if used for the goods or services for which it has commenced to be used and for which it is continuously used 15 (4)(ii), DK-TML. Scope of protection: The same as for Danish registered trade marks, i.e. against the acts corresponding to those referred to in Article 9(1) (a), (b) and (c) CTMR 4 (1), (2), DK-TML. B. Trade name/other business identifier - Company name to which the person concerned has a legal title The term company name is to be given an extensive interpretation and covers not only private companies such as private firms, limited liability companies, other commercial companies, secondary trade names but equally foundations, unions, associations, museums and public institutions. 14 (iv), DK-TML

326 Member State National rights which constitute earlier rights in the sense of Article 8 (4) CTMR Acquisition: Company name protection does not require its registration. Right to prohibit use of subsequent (registered) trade mark, where signs are identical or similar. - Signs used in the course of trade 15 (4)(ii), DK-TML The term signs used in the course of trade is to be given an extensive interpretation and covers, according to Danish law, any commercial meaning or symbol, which can serve as a connecting link between a business and its customers/users. This includes, inter alia, trade marks, business names and shop-facades Right to prohibit use of subsequent (registered) trade mark, where signs are identical or similar. - Distinctive titles of protected literary and artistic works Only titles of protected literary and artistic works fall under this provision. Whether a literary or artistic work is protected is decided according to the Danish law on Copyright. 14 (v), DK-TML Right to prohibit use of subsequent (registered) trade mark. Finland A. Unregistered trade mark - Trade mark established on the market 2, FI-TML Acquisition: Use leading to the unregistered mark becoming established on the market. Shall be regarded as established if it has become generally known in the appropriate business or consumer circles in Finland as a symbol specific to its proprietor s goods or services. Scope of protection: Identical to that of a Finnish registered trade mark, i.e. against acts corresponding to those contained in Article 9 (1)(a), (b) and (c) CTMR. 1, 2 (3), 6, 14.1 (6), FI-TML B. Trade name/other business identifier - Trade names ((toiminimi, firma) definition: any name that a natural or legal person is using in business activities). - these include secondary trade names ((aputoiminimi, bifirma) natural or legal person can carry out part of their business under a secondary trade name) and secondary symbols ((toissijainen tunnus, sekundärt kännetecken) sign, including figurative signs, used in the course of trade) 1, 2 (2), 3 (2), 6, 14.1 (6), FI-TML Acquisition: Use leading to the trade name becoming established on the market. Right to prohibit subsequent trade mark, if signs can be confused and cover identical or similar goods or services. - Distinctive titles of protected literary or artistic work

327 Member State National rights which constitute earlier rights in the sense of Article 8 (4) CTMR Right to prohibit the use of a subsequent trade mark if it is composed of or contains anything that is likely to give the impression of being the title of another s protected literary or artistic work 14 (5), FI-TML - Name of a trader Right to prohibit subsequent trade mark if signs can be confused and cover identical or similar goods and services 1, 6, 14.1 (6), FI-TML France A. Unregistered trade mark Unregistered trade marks are not recognised under French law. B. Trade name/other business identifier - Company name (dénomination sociale) or sign of a company Article L (b), FR-CPI Acquisition: Protection of the company name from completion of founding documents of the company. Geographical scope: In principle, a company name is protected only in the area of effective activities. Right to prohibit use of a subsequent trade mark. Scope of protection: Risk of confusion in the mind of the public. - Trade name (nom commercial) Article L (c), FR-CPI Acquisition: Protection from first use in trade. Must be known throughout the French national territory. Scope of protection: Risk of confusion in the mind of the public - Business sign (enseigne) Article L (c), FR-CPI. Acquisition: Protection from its first use in trade. Geographical scope: limited, in principle, to area of activity (rayonnement local). Right to prohibit use of a subsequent trade mark only if sign is known in the whole country (enseigne notoire). Scope of protection: Risk of confusion in the mind of the public.

328 Member State National rights which constitute earlier rights in the sense of Article 8 (4) CTMR Germany A. Unregistered trade marks Trade mark acquired by use ("Benutzungsmarke") Acquisition through use which has led to a recognition by the relevant public that the sign is a mark of the claimant ("Verkehrsgeltung"). The degree of recognition must be at least 25 %. 4 (2), DE-TML Right to prohibit the use of a subsequent trade mark in the whole territory of Germany, if the recognition exists in the whole of Germany. Not, if recognition is established only for a particular locality. 12, 14, DE-TML Scope of protection: The same as for registered German trade marks, i.e. against the acts corresponding to the acts referred to in Article 9 (1) (a), (b) and (c) CTMR. 14 (2) no. 1, 2 and 3, DE-TML B. Trade name/other business identifier Business identifiers ("geschäftliche Bezeichnungen"), namely - business signs ("Unternehmenskennzeichen"), including special business designations ("besondere Geschäftsbezeichnungen"), - other business signs ("Geschäftsabzeichen") or other signs designated to distinguish the business from other businesses - work titles ("Werktitel") 5 (1), DE-TML Definition of business signs: A business sign is a sign which is used in the course of trade as the name or firm or as the special business designation of a business establishment ("Geschäftsbetrieb") or business enterprise ("Unternehmen"). 5 (2), 1 st sentence, DE-TML The name or firm is the official or officially registered designation of the trader. The special designation of business is a sign used by the trader to identify his business or undertaking as such, which functions as the name of the business or enterprise. Definition of other business signs ("Geschäftsabzeichen") or other signs designated to distinguish the business from other businesses: To the notion of a special designation of a business are assimilated ("stehen gleich") such business signs ("Geschäftsabzeichen") or other signs designated to distinguish the business from other businesses which, within the relevant public, are considered to be the distinguishing sign ("Kennzeichen") of that business. 5 (2), 2 nd sentence, DE-TML The other business signs ("Geschäftsabzeichen") or other signs designated to distinguish the business from other businesses are such signs designated to distinguish a business which do not have a name function. These other signs are protected only if they have become known in the course of trade as distinctive signs, i.e., if they have acquired distinctiveness through market recognition ("Verkehrsgeltung") (Official Memorandum to the Trademark Bill (Amtliche Begründung), ad 5, 1 st par..) Definition of work titles: A work title is the name or other designation of printed publications, films, musical works, stage works or other comparable works. This can be an individual work, a series of works, or a periodical publication. Under German jurisprudence, this also includes titles of radio or television series, computer games and video games, possibly also computer programs. It is not required that the work designated by the work title is protected under copyright law. 5 (3), DE-TML

329 Member State National rights which constitute earlier rights in the sense of Article 8 (4) CTMR Acquisition of rights: - Business signs: - Main rule: If the sign is inherently distinctive, acquisition through use in trade as a business sign. If the sign is not inherently distinctive, through acquisition of market recognition ("Verkehrsgeltung"). - Exception: other business signs ("Geschäftsabzeichen") or other signs designated to distinguish the business from other businesses are protected only if they have become known in the course of trade as distinctive signs, i.e., if they have acquired distinctiveness through market recognition ("Verkehrsgeltung") - Work titles: If the work title is inherently distinctive, acquisition through use in the course of trade, i. e. normally as from the appearance of the work. The required degree of inherent distinctiveness is low. If the work title is not inherently distinctive, acquisition through acquisition of market recognition ("Verkehrsgeltung"). 5, DE-TML Right to prohibit use: If the business sign (except "other business signs or other signs designated to distinguish the business from other businesses") or work title is inherently distinctive, right to prohibit the use in the whole territory of Germany. If the business sign or work title is not inherently distinctive, right to prohibit the use of a subsequent trade mark in the whole territory of Germany, if the market recognition exists in the whole of Germany. Not, if market recognition is established only for a particular locality. 12, 15, DE-TML Other business signs ("Geschäftsabzeichen") or other signs designated to distinguish the business from other businesses: right to prohibit the use of a subsequent trade mark in the whole territory of Germany, if the market recognition exists in the whole of Germany. Not, if market recognition is established only for a particular locality. Scope of protection: Against unauthorised use in a way which is likely to create confusion with the business sign or work title. If the business sign or work title has a reputation in Germany, also against use of the identical or a similar business identifier in the course of trade if there is no likelihood of confusion, if the use of the sign would be detrimental to, or take unfair advantage of, the distinctiveness or repute of the business sign or work title. Reputation protection for work titles difficult to establish in practice (no case law yet). 15, DE-TML

330 Member State National rights which constitute earlier rights in the sense of Article 8 (4) CTMR Greece A. Unregistered trade marks Introduction: There are two sets of provisions dealing with the protection of unregistered trade marks and related signs: (a) trade mark law confers on the owner the right to prohibit registration of a later trade mar, whereas (b) the law on unfair competition and other specific provisions deal with the issue of use. As the complementary application of trade mark law for any matter not directly dealt with in other statutes is generally accepted, both sets of rules are discussed here. Acquisition through use in the course of trade. If not inherently distinctive, they must have also been "established in the market". Necessary conditions of protection: Prior use, likelihood of confusion as to origin. Article 4 (3) (a), GR-TML Law 146/1914 on Unfair Competition, Article 13 (1) B. Trade name/other business identifiers - Company names: Acquisition exclusively through use in the course of trade. Registration is not relevant for protection, it only serves administrative purposes. Necessary conditions of protection: Prior use, likelihood of confusion as to origin. Civil code, Article 58 Law 1089/1980, Article 4-8, as amended by 1746/1988 Article 4 (3) (a), GR-TML Law 146/1914 on Unfair Competition, Article 13 (1) - Trade names and commercial establishment insignia: Acquisition through use in the course of trade. If not inherently distinctive, they must have also been "established in the market". Necessary conditions of protection: Prior use, likelihood of confusion as to origin. Article 4 (3) (a), GR-TML Law 146/1914 on Unfair Competition, Article 13 (1) (2) - Titles of periodical publications: Generally regarded as sui generis exclusive rights, whether or not original enough to be protected as literary works. Acquisition through use in the course of trade (i.e. from date of first publication). Necessary conditions of protection: Prior use, likelihood of confusion as to origin. Article 4 (3) (a), GR-TML Law 146/1914 on Unfair Competition, Article 13 (1) - Other distinctive signs The peculiar shape of the goods or of their packaging, as well as the peculiar get up or decoration thereof (I, ), provided they are known in the relevant commercial sector as product identifiers of a given trader.

331 Member State National rights which constitute earlier rights in the sense of Article 8 (4) CTMR Acquisition through use in the course of trade. They must be capable of performing a trade mark-like function (i.e. to possess a distinctive character afforded by a certain degree of originality). Necessary conditions of protection: Prior use, likelihood of confusion as to origin. Article 4 (3) (a), GR-TML Law 146/1914 on Unfair Competition, Article 13 (3) General note: All the exclusive signs referred to above are also protected under Art. 1 of Law 146/1914 on "Unfair Competion", especially as regards infringing acts not covered by the above provisions (e.g. protection of reputed signs for dissimilar goods dilution of, or unfair advantage to, their distinctiveness or repute, that is, where likelihood of confu- Ireland A. Unregistered TM - Unregistered trade marks used in the course of trade Section 10 (4)(a), IE-TMA Right to prohibit use of subsequent TM if protected by any rule of law, in particular, the law of passing off. The action for passing-off is based upon goodwill acquired by use of the earlier sign. Goodwill is sometimes called reputation. In Ireland, goodwill can be acquired without necessarily trading in the territory of the State. The tort arises if a later sign causes a misrepresentation likely to lead to deception or confusion, with consequent likelihood of damage to the goodwill or business of the proprietor of the earlier sign. The law is explained in "Intellectual Property in Ireland" by Robert Clark and Shane Smyth, Butterworths, 1997, Chapter 24. Authoritative statements of the law are found in Court judgements, for example in C. & A. Modes v. C. & A. (Waterford) [1978] Fleet Street Reports 126; Adidas K.G. v. O neill & Co. Limited [1983] Fleet Street Reports 76; and Guiness Ireland Group v. Kilkenny Brewing Co. Limited [2000] Fleet Street Reports 112. B. Trade name/other business identifier - Business sign used in the course of trade Section 10 (4)(a), IE-TMA Right to prohibit use of subsequent TM if protected by any rule of law, in particular, the law of passing off. On the law of passing-off, see remarks above under point A.

332 Member State National rights which constitute earlier rights in the sense of Article 8 (4) CTMR Italy A. Unregistered TM ("Marchio di fatto") - Sign known as a trade mark or as a sign which is distinctive for manufactured goods or services which have been put on the market or rendered by others (= notorious prior used mark) Article 17 (1)(b), IT-TML Right to prohibit use of a subsequent trade mark, where known by the relevant public throughout Italy or in a substantial part of it. Scope of protection: Identical or similar signs and identical or similar goods or services and likelihood of confusion including likelihood of association. B. Trade name/other business identifier - Company name, corporate name, trade name or business signs adopted by others ("ditta", "denominazione sociale", "ragione sociale", "insegna") Article 17 (1)(c), IT-TML Right to prohibit use of subsequent trade mark, where known by the relevant public throughout Italy or in a substantial part of it. Scope of protection: Identical or similar signs and identical or similar goods or services and likelihood of confusion including likelihood of association. Portugal A. Unregistered TM - B. Trade name/other business identifier - Trade name, company name Articles 33 (1)(b) and 189 (1)(f), PT-CPI, Decree No 129/98 of Right to prohibit use of a subsequent trade mark, if liable to mislead or confuse consumers Requirement of registration before the Register of Companies - Name or emblem of an establishment, logo Names of establishment are: - fancy or specific designations; - historical names, with the exception of those the use of which would be detrimental or offensive to the esteem in which such names are generally held; - the name or the property or premises of the establishment, when this is admissible or when accompanied by a distinctive element; or, - the name, trade name, company name, pseudonym or coined name of the proprietor. Emblems of establishments are: - any external sign composed of figures or designs, alone or combined with the names or designations mentioned above or other words or devices, provided that the whole constitutes a specific form or configuration as a distinctive or characteristic element - the ornamentation of frontages and parts of shops, warehouses or factories exposed to the public, as well as the colours of a flag, provided that perfectly distinguish the respective establishment

333 Member State National rights which constitute earlier rights in the sense of Article 8 (4) CTMR Logos are: - Signs distinguishing an entity producing goods or rendering services, which are composed of letters, or letters and designs, provided that the sign as a whole constitutes a distinctive form or configuration Articles , 246, 189 (1) (f), PT-CPI Right to prohibit use of a subsequent trade mark, if liable to mislead or confuse consumers Requirement of registration before the Portuguese Industrial Property Office Spain A. Unregistered TM - Unregistered trade marks are not recognised under Spanish trade mark law B. Trade name/other business identifier - Registered trade name (nombre comercial registrado) A trade name may consist of a name or sign and, in particular, may be: - surnames, corporate names and the names of legal entities; - fanciful names; - names alluding to the object of the business activity; - anagrams and logotypes; - images, figures and designs; - any combination of such signs Article 87, ES-TML Acquisition: - Registration with the Spanish Patent and Trademark Office - Applications for registration at the Spanish Patent and Trademark Office are also protected, provided that the trade name later becomes registered Articles 7 (2), 90, ES-TML Scope of protection: - Trade marks identical to the earlier trade name and designating goods or services which are identical to the activities covered by the trade name, - trade marks identical or similar to the earlier trade name and designating goods or services which are identical or similar to the activities covered by the trade name, provided that there is a risk of confusion on the part of the public which includes a likelihood of association, - trade marks identical or similar to an earlier trade name having a reputation in Spain and designating goods or services which are not similar to the activities covered by the trade name where, due to the reputation of the trade name, the use of the trade mark would indicate a connection between the goods or services covered by the trade mark and the proprietor of the trade name, or where the use of the trade mark, without due cause, would take unfair advantage of, or be detrimental to, the distinctive character or repute of the trade name. Articles 7 (1)(a), 7 (1)(b), 8 (1), ES-TML Right to prohibit use of subsequent trade mark. Articles 7, 8, 90, ES-TML

334 Member State National rights which constitute earlier rights in the sense of Article 8 (4) CTMR - Unregistered trade name (nombre comercial no registrado), company names (denominación social), business names (razón social) Definition: same as for registered trade names. Acquisition: use or notorious knowledge throughout the territory of Spain or, in case of foreigners to whom Article 8 of the Paris Convention applies, use or notorious knowledge in Spain. Article 9 (1), ES-TML Scope of protection: Risk of confusion due to the identity or similarity of the signs and the identity or similarity of their area of commercial application. Article 9 (1), ES-TML Right to prohibit the use of a subsequent trade mark Article 9 (1), ES-TML - Other signs: The former Spanish trade mark law protected business signs (rótulos de establecimiento) as rights of a mere local significance and with a protection limited to the municipality for which they are registered. Their definition corresponded to the definition of trade names. The new Spanish trade mark law no longer provides for such business signs and contains transitional provisions according to which existing registrations of such signs are phased out within the next seven years and will in the future be governed by the law against unfair competition. Such business signs do not fall under Article 8 (4) CTMR but under Article 107 CTMR. Sweden A. Unregistered TM - Unregistered trade marks established on the market 2 (1), SE-TML Acquisition: Use leading to the unregistered mark becoming established on the market. A sign shall be considered to have become established on the market when it is, within a significant portion of the circle for which it is intended, known as a symbol for the goods which are being made available under it. Scope of protection: Identical to that of a Swedish registered TM, i.e. against acts corresponding to those contained in Article 9(1)(a), (b), and (c) CTMR 1, 2 (3), 6, 14 (6), SE-TML B. Trade name/other business identifier - Trade names 1, 2 (2), 3 (2), 14 (6), SE-TML Acquisition: Use leading to the trade name becoming established on the market Right to prohibit use of a subsequent TM, if signs can be confused and cover identical or similar goods and services

335 Member State National rights which constitute earlier rights in the sense of Article 8 (4) CTMR - Distinctive titles of protected literary or artistic work 14 (5), SE-TML Right to prohibit use of a subsequent TM If it contains an element which is likely to convey the impression of being the distinctive title of another person's protected literary or artistic work. - Name of trader 1, 6, 14 (6), SE-TML Right to prohibit subsequent trade mark if signs can be confused identical or similar goods or services United Kingdom A. Unregistered marks - Unregistered TM used in the course of trade Unregistered TM used in the course of trade, if protected by any rule of law, including that of passing off. Section 5 (4)(a), GB-TMA B. Trade name/other business identifier - Sign used in the course of trade Sign used in the course of trade, protected by any rule of law, including that of passing off. Section 5 (4)(a), GB-TMA Right to prohibit use of a subsequent trade mark Remarks: The Olympic Symbol Protection Act 1995 contains provisions on the exclusive use for commercial purposes of the Olympic symbol and certain words associated with the Olympic games by an individual nominated by the Secretary of State: such entitlement is not a basis for Article 8(4) CTMR.

336 Member State National rights which will fall under Article 8 CTMR, upon accession CYPRUS A. Unregistered trade marks: - B. Other rights: - No CZECH REPBULIC A. Unregistered trade marks: Non-registered sign used in the course of trade of more than mere local significance Article 7 (1)(g) TML Act No. 441/2003 Coll. of 3 December 2003 on Trademarks and on amendments to Act No. 6/2002 Coll. on judgements, judges, assessors and state judgement administration and on amendments to some other Acts (Act on Courts and judges) in the wording of later regulations (came into force on 1 st April 2004) B. Other rights: Another sign used in the course of trade of more than mere local significance Article 7 (1)(g) TML ESTONIA A. Unregistered trade marks: - Unregistered trade marks not recognised under Estonian law B. Other rights: - Trade names (provided that the trade name has been entered in the commercial register prior to the date of receipt of the application for a trade mark and provided that the area of activity of the owner of the trade name registered in the commercial register includes the services of the later trade mark application). - 8 (1)(5) TML Opposition Guidelines - Part 4, Article 8(4) CTMR Status: March 2004 Page 336

337 Member State National rights which will fall under Article 8 CTMR, upon accession HUNGARY A. Unregistered trade marks: - Unregistered trade marks which have been effectively used in the country where the use of the sign without the consent of the prior user would be contrary to law. Article 5 (2)(a) B. Other rights - No LATVIA A. Unregistered trade marks: - No protection of unregistered trade marks (except for well-known trade marks. Article 4 (4), (7) TML B. Other rights: - Commercial rights, that is rights pertaining to a trade name (commercial designation, name of a mass medium, or other similar sign) that is used in an identical or similar business sector, if its fair and lawful use in the course of trade in Latvia was commenced before the date of application for registration of the trade mark or its priority date, respectively, or to a trade name (commercial designation, name of a mass medium, other similar sign) of Latvia or of a foreign country that was well known in Latvia. Article 9 (3) No. 3 TML LITHUANIA A. Unregistered trade marks: - Not recognised under Lithuanian law B. Other rights: - Company names Article 7 (1)(iv) TML Opposition Guidelines - Part 4, Article 8(4) CTMR Status: March 2004 Page 337

338 Member State National rights which will fall under Article 8 CTMR, upon accession MALTA A. Unregistered trade marks: - Unregistered trade marks used in the course of trade Article 6 (4)(a) TML B. Other rights: - Other signs used in the course of trade Article 6 (4)(a) TML POLAND A. Unregistered trade marks: - Not recognised under Polish law B. Other rights: SLOVAKIA A. Unregistered trade marks: - Unregistered trade marks which have become characteristic through use for at least two years prior to the filing of the opposing application Article 4 (d) TML B. Other rights: - Trade names entered in the Register of Companies or a similar register Article 4 (e) TML Opposition Guidelines - Part 4, Article 8(4) CTMR Status: March 2004 Page 338

339 Member State National rights which will fall under Article 8 CTMR, upon accession SLOVENIA A. Unregistered trade marks: - Unregistered marks not recognised according to Slovenian law B. Other rights: - No Opposition Guidelines - Part 4, Article 8(4) CTMR Status: March 2004 Page 339

340 Trade marks with reputation OPPOSITION GUIDELINES Part 5 Trade marks with reputation Article 8(5) CTMR Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 340

341 Trade marks with reputation INDEX PART 5: TRADE MARKS WITH REPUTATION I. INTRODUCTION Relevant provisions The state of case-law II. SCOPE OF APPLICATION Applicability to registered marks The requirement of registration Borders with Article 8(2)(c) CTMR Applicability to similar goods & services III. CONDITIONS OF APPLICATION Earlier mark with reputation Nature of reputation Scope of reputation Degree of recognition Relevant public Goods and services covered Relevant territory Relevant point in time Assessment of reputation Relevant factors Trade mark awareness Market share Intensity of use Geographical extent of use Duration of use Promotional activities Other factors Proof of reputation Standard of proof Burden of proof Evaluation of the evidence Means of evidence Identity similarity of signs Detriment Unfair advantage Protected subject-matter Assessment of detriment unfair advantage Forms of detriment unfair advantage Detriment to distinctiveness Detriment to repute Taking unfair advantage of distinctiveness Taking unfair advantage of repute Proof of detriment unfair advantage Standard of proof Burden of proof Means of evidence Use without due cause Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 341

342 Trade marks with reputation PART 5: TRADE MARKS WITH REPUTATION I. INTRODUCTION 1. Relevant provisions According to Article 8(5) CTMR upon opposition by the proprietor of an earlier trade mark, within the meaning of paragraph 2, the trade mark applied for shall not be registered: where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier Community trade mark the trade mark has a reputation in the Community and, in the case of an earlier national mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. The same wording is used in the parallel provisions of the Trade Mark Directive (First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, TMD ), namely Article 4(3) TMD, which deals with the protection of Community trade marks with reputation, and Article 4(4)(a) TMD, the equivalent provision for national marks. Even though the implementation of Article 4(4)(a) TMD was optional, all the Member States have in fact adopted provisions granting enlarged protection to national marks with reputation. However, even in the hypothetical case that an acceding Country decides not to enact an equivalent provision in its trade mark law, the independent reference to national marks with reputation in Article 8(5) CTMR means that they are directly protected at Community level, i.e. irrespective of whether the national law grants them enlarged protection. The wording of Article 8(5) CTMR is also very similar to the one used in Articles 9(1)(c) CTMR and 5(2) TMD, i.e. the provisions determining the exclusive rights of a trade mark proprietor, with a slight difference in the way these refer to the condition of detriment: unlike the conditional form used by Article 8(5), which applies where use of the application would take unfair advantage of, or be detrimental to the distinctiveness or repute of the earlier mark, Articles 9(1)(c) CTMR and 5(2) TMD read takes unfair advantage of or is detrimental to. The reason for this difference is that in the first case Article 8(5) CTMR registrability is at issue which may have to be decided without any use of the later mark having been made, while in the second case the prohibition of use is at issue. The impact of this difference on the kind of Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 342

343 Trade marks with reputation evidence required for proving detriment in either case is discussed in section III below. 2. The state of case-law The European Court of Justice has dealt so far with the protection of marks with reputation in two preliminary rulings delivered in the context of the TM Directive. In case C-375/97, General Motors v Yplon S.A., ( General Motors ), the question put to the Court concerned the meaning of the term reputation in the context of Article 5(2) TMD, whereas in case C-292/2000, Davidoff & Cie SA, Zino Davidoff SA v Gofkid Ltd. ( Davidoff ), it concerned the scope of protection afforded to marks with reputation and, more particularly, the applicability of Article 5(2) TMD to similar goods and services. In view of the limited scope of the questions referred to the Court, the above judgements did not proceed to a full-scale interpretation of Article 5(2) TMD, saying little or nothing about similarity, detriment, unfair advantage or due cause. Thus, they are authority only for the issues they directly address, namely the nature, scope, territorial extent and way of assessment of reputation. Furthermore, there are the two opinions of Advocate General Jacobs in the above cases, as well as the opinion of Advocate General Ruiz-Jarabo Colomer in case C-206/2001, Arsenal Football Club plc v Mathew Reed ( Arsenal ), which go somewhat further in the analysis of Article 5(2) TMD. Even though opinions of Advocates General are not binding, they are useful to the extent they provide a source of arguments and suggestions for the interpretation and further development of the law. Also the decisions of the Boards of Appeal are still limited in number. Only a few decisions have dealt with the interpretation of Article 8(5) thoroughly, whereas others only deal with specific aspects of the protection afforded to marks with reputation. Thus, these Guidelines are supported by authority only in some aspects, whereas in others the current practice is developed by following standard rules of statutory interpretation. The position taken in the text as regards the latter issues will be adapted as the case law of the Boards of Appeal, the CFI and ECJ develop. Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 343

344 Trade marks with reputation II. SCOPE OF APPLICATION The wording of Article 8(5) CTMR has given rise to some controversy as regards its applicability exclusively to (a) earlier registered marks and (b) dissimilar goods and services. As these issues directly affect the scope of its application, it should be clarified at the outset whether it is possible to also apply Article 8(5) to (a) unregistered/well-known marks and (b) similar goods and services. 1. Applicability to registered marks 1.1. The requirement of registration Article 8(5) specifies the kinds of earlier rights on which an opposition may be based by reference to paragraph 2 of the same Article, which, apart from Community, international, Benelux and national registrations or applications, includes earlier well-known marks within the meaning of Article 6 bis of the Paris Convention, that is, marks that may, or may not be registered. It has been argued that, as a consequence of this reference, Article 8(5) should also apply to unregistered marks, at least to the extent that these have become well-known in the relevant territory, all the more so since the protection of well-known marks against dissimilar goods and services is favoured both by the WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks (WIPO Recommendations) and by Article 16(3) TRIPS. However, such an interpretation cannot be sustained by the wording of Article 8(5) which indirectly but clearly restricts its applicability to earlier registered marks, by prohibiting registration where [the application] is identical or similar to the earlier trade mark and is to be registered for goods and services that are not similar to those for which the earlier trade mark is registered. It follows that the existence of an earlier registration is a necessary condition for the application of Article 8(5) and that, as a consequence, the reference to Article 8(2) should be limited to earlier registrations and to earlier applications subject to their registration. Such a restrictive approach is not incompatible with Article 16(3) TRIPS, the wording of which also refers to an earlier registration in a very similar manner: Article 6 bis PC shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of the of that trademark would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trade mark are likely to be damaged by such use. Nor can this view be excluded by the fact that the WIPO Recommendations do not impose any conditions for granting extended protection to earlier well- Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 344

345 Trade marks with reputation known marks as they are not binding for the interpretation of the CTM Regulation. Therefore, Article 8(5) CTMR only applies to earlier Community, international, Benelux and national registrations, as well as to earlier applications, subject to their registration Borders with Article 8(2)(c) CTMR The requirement of registration thus serves to mark the borders between Articles 8(5) and 8(2)(c) CTMR in the following manner: On the one hand, well-known marks which are not registered in the relevant territory, cannot be protected under Article 8(5) against dissimilar goods. They can only be protected against identical or similar goods pursuant to Article 8(1)(b), to which Article 8(2)(c) refers for determining the scope of protection. However, this is without prejudice to the fact that well-known marks, to the extent they are not registered, are also protected under Article 8(4) CTMR. Thus, if the relevant national law affords protection to them against dissimilar goods and services, such enhanced protection may also be invoked under Article 8 (4). On the other hand, where well-known marks have been registered, either as CTMs, or as national marks in one of the member States, they can be invoked under Article 8 (5), but only if they also fulfil the requirements of reputation. Even though the terms well-known (a traditional term used in Article 6 bis of the Paris Convention) and reputation denote distinct legal concepts, there is a substantial overlap between them, as shown by a comparison of the way well-known marks are defined in the WIPO Recommendations, with the way reputation has been described by the Court in General Motors. Thus, it will not be unusual for a mark which has acquired well-known character, to have also reached the threshold laid down by the Court in General Motors as regards marks with reputation, given that in both cases the assessment is principally based on quantitative considerations regarding the degree of knowledge of the mark among the public, and that the thresholds required for each case are expressed in quite similar terms ( known or wellknown at the relevant sector of the public 1 for well-known marks, as against known by a significant part of the relevant public as regards marks with reputation). The overlap between marks with reputation and registered well-known marks has a repercussion on the raising of the ground of opposition, in the sense that it should not matter for the applicability of Article 8(5) if the opponent calls 1 Article 2(2)(b) and 2(2)(c) of the WIPO Recommendations. Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 345

346 Trade marks with reputation his earlier registration a well-known mark instead of a mark with reputation. For this reason, the terminology used must be carefully scrutinised, especially where the grounds of the opposition are not clearly explained, and a flexible approach should be taken where appropriate. For example, if the opponent bases the opposition (a) on an earlier registration and (b) on an identical earlier well-known mark in the same territory and grounds it on Articles 8(1)(b), 8(2)(c) and 8(5) CTMR, the earlier right must be examined (a) under Article 8(1)(b) as an earlier registration with enhanced distinctiveness (in view of its well-known character) (b) under 8(2)(c) as an earlier well-known mark (which will only be useful if registration is not proved, as otherwise the outcome is the same) and (c) under Article 8(5), as a mark with reputation, even if reputation was not claimed expressly. R 799/ RODIO / RHODIA (FIG MARK) (EN) Even if the opponent has not expressly grounded his opposition on Article 8(5) CTMR, the contents of the notice (especially as regards the relationship between the goods) and of the explanation of grounds must be carefully analysed with a view to ascertaining whether the real intention of the opponent was to also rely on this ground. 2. Applicability to similar goods & services The literal interpretation of Article 8(5) leads to the prima facie conclusion that it only applies to dissimilar goods and services, as its wording provides that the mark applied for will not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods and services which are not similar to those for which the earlier trade mark is registered. Based on such an interpretation, a number of decisions of the Opposition Division have regarded the dissimilarity of goods and services as a necessary condition for the application of Article 8(5). 2096/2001 BUKO/BUKO (EN), 1458/2001 DB(fig)/db SYSTEME (EN), 1490/2001 EXIT/XITE (EN), 2094/2001 DALSY DAYSIR (EN), 1844/2001 JP JESUS DEL POZO/JP JEAN PASCALE (EN) However, the above interpretation has been strongly criticised for leaving a gap in the protection of marks with reputation, because if protection may be granted under Article 8(5) where the goods are not similar, it would seem inconsistent to deny its application to similar goods where the rest of its requirements are fulfilled and Article 8(1)(b) does not apply because there is no likelihood of confusion. In such a case trade mark owners would get more protection in the less dangerous case. For this reason, it has been suggested that Article 8(5) should also apply, directly or by analogy, where the goods are identical or similar. This question was referred to the Court of Justice for a preliminary ruling in the context of the Davidoff case, cited above. Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 346

347 Trade marks with reputation The Opinion of Advocate General Jacobs gave the principal arguments in support of each view and suggested to limit the protection afforded by Articles 4(4)(a) and 5(2) TMD only to cases where the goods and services of the later mark are not similar to those of the earlier mark. The Advocate General considered that it was the intention of the legislator to limit the special protection granted to marks with reputation to dissimilar goods and that there is no real gap in the law worthy of interpreting the text in a manner contrary to its express wording. Even though he admitted that there might be isolated instances where it will not be possible to apply Article 8(1)(b), he argues that in the great majority of cases there will also be likelihood of confusion, at least in the broad sense of the term (belief that an economic link exists between the undertakings producing the goods). He also feared that the application of Article 8(5) to similar goods would blur the clear outlines of the protection afforded by Article 8(1)(b), which is based essentially on the existence of likelihood of confusion, by allowing in certain circumstances a concurrent or alternative protection based on other criteria and thus entailing legal uncertainty. However, the Court did not follow the suggestions of the Advocate General and came to the conclusion that Articles 4(4)(a) and 5(2) TMD should be interpreted as entitling the Member States to provide specific protection for trade marks with a reputation in cases where the later mark is intended to be used or is used for goods or services identical with or similar to those covered by the earlier mark. In reaching this conclusion, the Court observed that Article 5(2) TMD must not be interpreted solely on the basis of its wording, but also in the light of the overall scheme and objectives of the system of which it is a part. Thus, it cannot be interpreted in a manner which would lead to marks with a reputation having less protection where a sign is used for identical or similar goods or services. The Court justified this approach as the only one consistent with its interpretation of Articles 4(1)(b) and 5(1)(b) TMD, by referring to its findings in Sabel and Marca Mode, where it excluded a broad interpretation of the notion of confusion. So far, the Opposition Division has not dealt with cases where the signs were similar, the goods were identical or similar, the earlier mark had a reputation, but a likelihood of confusion could not be established. Indeed, as the Advocate General also pointed out, such a scenario will be quite exceptional. However, as this possibility cannot be ruled out completely, if such a case arises the principles laid down in Davidoff must be followed, by examining whether the proprietor of the earlier mark may have a legitimate interest in protecting the distinctiveness and the repute of his mark under Article 8(5). Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 347

348 Trade marks with reputation III. CONDITIONS OF APPLICATION The following conditions need be met for Article 8(5) to apply: (1) Earlier registered mark with reputation in the relevant territory; (2) Identity or similarity between the contested CTM application and the earlier mark; (3) Use of the sign applied for must be capable of taking an unfair advantage of, or being detrimental to the distinctiveness or the repute of the earlier mark; (4) Such a use must be without due cause. This also reflects the order the relevant requirements are usually examined in the decisions of the Opposition Division. However, the examination often starts with the assessment of the similarities between the signs, especially in cases where there is little or nothing to say about it, either because the marks are identical, or because they are patently similar or dissimilar. 105/1999 HOLLYWOOD / HOLLYWOOD (FR), 1108/1999 SNICKERS / SNACCOS (EN), 1142/1999 CAPTAIN BIRD S EYE / EL CAPITAN PESCANOVA (EN), 1224/1999 (fig. DEUTSCHE BANK LOGO ) / ARMATIC (fig.) (EN), 314/2000 SEMCO / Semco (EN) 1. Earlier mark with reputation 1.1. Nature of reputation The nature and scope of reputation are not defined by either the CTM Regulation, or the TM Directive. Furthermore, the terms used in the different language versions of these texts are not fully equivalent to each other, which has led to considerable confusion as to the true meaning of the term reputation, as admitted in paragraphs of the Opinion of Advocate General Jacobs in General Motors. Given the lack of statutory definition, the Court defined the nature of reputation by reference to the purpose of the relevant provisions. In interpreting Article 5(2) TMD the Court held that the text of the TM Directive implies a sufficient degree of knowledge of the earlier mark among the public and explained that it is only where there is a sufficient degree of knowledge of the mark that the public, when confronted with a later trade mark, may possibly make an association between the two marks, and the earlier mark may consequently be damaged. In view of these considerations, the Court concluded that reputation is a knowledge threshold requirement, implying that it must be principally Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 348

349 Trade marks with reputation assessed on the basis of quantitative criteria (General Motors, paragraphs 22, 23) TELEFONICA ON LINE / T-ONLINE (EN) Such an interpretation of reputation diverges from what was supported by the case-law and jurisprudence of several Member States under the regime that preceded the adoption of the TM Directive (in addition to the mark being known among the public at large, it was often required that the mark should also enjoy a high degree of inherent distinctiveness, uniqueness, prestige, quality image etc.). Thus, by exclusively focusing on the degree of knowledge of the mark, the Court has in fact simplified the test of reputation, compared to what was often needed in the past for accepting that a mark enjoys a reputation. Moreover, if reputation is to be assessed on the basis of quantitative criteria, arguments or evidence relating to the esteem that the public might have for the mark, rather than to its recognition, are not directly relevant for establishing that the earlier mark has acquired sufficient reputation for the purposes of Article 8(5). However, as the economic value of reputation is also the protected subject-matter of this provision, any qualitative aspects thereof are of relevance when assessing the possibility of detriment or unfair advantage (see also section III below). 105/1999 HOLLYWOOD/HOLLYWOOD (FR), 81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC (EN), 278/2000 SEPHORA/SEPHORA (fig.) (EN) Article 8(5) protects famous marks not as such, but rather for the success and renown ( goodwill ) they have acquired in the market. A sign does not enjoy any reputation inherently, e.g. simply because it refers to a renowned person or event, but only in connection with the goods and services it designates and the use that has been made of it. 81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC (EN) For example, the fact that the famous pop artist Andy Warhol saw some artistic value in the packaging of Campbell s soup, is not sufficient in itself for establishing that the mark enjoys reputation within the meaning of 8(5), and this irrespective of the success and renown of the painting as a work of art. 1243/2000 CAMPBELL S et al./campbell CATERING (EN) It should also be noted that the kind of market recognition required for marks which have acquired enhanced distinctiveness through use in the context of Article 8(1)(b), and for well-known marks within the meaning of Article 6 bis PC, is of the same character as reputation, in that it is principally based on quantitative considerations regarding the degree of knowledge the mark has acquired among the public, without prejudice of course to the level of threshold required in each case. This is supported both by the case-law of the Court (in particular the judgments in Lloyds and Chiemsee), and by the WIPO Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 349

350 Trade marks with reputation Recommendations on the protection of well-known marks, which describe the nature of the respective notions in very similar terms Scope of reputation Degree of recognition Having defined reputation as a knowledge threshold requirement, the question that necessarily follows is how much awareness the earlier mark must attain among the public in order to pass this threshold. The Court held in this respect that the degree of knowledge required must be considered to be reached when the earlier trade mark is known by a significant part of the public and added that it cannot be inferred either from the letter or the spirit of Article 5(2) of the TM Directive that the trade mark must be known by a given percentage of the public (General Motors, paragraphs 25, 26). By refraining from defining in more detail the meaning of the term significant and by stating that the trade mark does not have to be known by a given percentage of the public, the Court in substance advised against the use of fixed criteria of general applicability, since a predetermined degree of recognition may not be appropriate for a realistic assessment of reputation if taken alone. Hence, in determining whether the earlier mark is known by a significant part of the public, account must be taken not only of the degree of awareness of the mark, but also of any other factor relevant to the specific case. For more about the relevant factors and their interplay, see section III.1.3. below. However, where goods or services concern quite small groups of consumers, the limited overall size of the market means that a significant part thereof is also restricted in absolute numbers. Hence, the limited size of the relevant market should not be regarded in itself as a factor capable of preventing a mark from acquiring a reputation within the meaning of Article 8(5), as reputation is more a question of proportions and less of absolute numbers. The need for the earlier mark to be known by a significant part of the public also serves to mark the difference between the notions of reputation as necessary condition for the application of Article 8(5) and enhanced distinctiveness through use as factor for the evaluation of likelihood of confusion for the purposes of Article 8(1)(b). Even though both terms are concerned with the recognition of the mark among the relevant public, in the case of reputation a threshold exists below which extended protection cannot be granted, whereas in the case of enhanced distinctiveness such a threshold is absent. It follows that in the latter case any indication of enhanced recognition of the mark should be taken into account and evaluated according to its significance, regardless of whether it reaches the limit required by Article 8(5). Thus, a finding of reputation under Article 8(1)(b) will not necessarily be conclusive for the purposes of Article 8(5). Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 350

351 Trade marks with reputation 1509/2001 CAPTAIN BIRDS EYE/ CAPTAIN BYRD APERO (fig) (EN), 1807/2001 BREEZE/ARIZONA BREEZE (EN) Relevant public In defining the kind of public that should be taken into account for the assessment of reputation, the Court held that the public amongst which the earlier trade mark must have acquired a reputation is the public that is concerned by that trade mark, that is to say, depending on the product or service marketed, either the public at large, or a more specialised public, for example traders in a specific sector. (General Motors, paragraph 24). Hence, if the goods and services covered by the mark are mass consumption products, the relevant public will be the public at large, whereas if the designated goods have a very specific application or are exclusively destined to professional or industrial use, the relevant public will be limited to the specific purchasers of the products in question. 66/2000 MAGEFESA(fig)/MAGEFESA(fig) (ES), 726/2001 LA MOLINERA/LA MOLISANA (EN), 2096/2001 BUKO/BUKO (EN) In addition to the actual buyers of the relevant goods, the notion of relevant public also extends to the potential purchasers thereof, as well as to those members of the public that only come indirectly into contact with the mark, to the extent that such consumer groups are also targeted by the goods in question, as for example sports fans in relation to athletic gear, or regular airtravellers as regards the various air carriers etc. 102/1999 NIKE /NIKE (ES), 1381/1999 AIR ONE/AIR ONE (IT), R 472/ BIBA/BIBA (FR) Quite often, a given product will concern various purchaser groups with different profiles, as in the case of multipurpose goods, or of goods that are handled by several intermediates before they reach their final destination (distributors, retailers, end-users). In such cases the question arises whether reputation has to be assessed within each separate group, or if it should cover all different types of purchaser. The example given by the Court (traders in a specific sector) implies that reputation within one single group may suffice. It should also be noted that the same approach is taken in the WIPO Recommendations as regards well-known marks. Likewise, if the earlier trade mark is registered for quite heterogeneous goods and services, different kinds of public might be concerned by each type of goods, and, thus, the overall reputation of the mark will have to be assessed separately for each category of goods involved. 81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC(fig.) (EN), 621/2001 F1 FORMULA 1(fig.)/F1 FORMULA 1 (fig.) (EN) Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 351

352 Trade marks with reputation It should be stressed that the foregoing only deal with the kind of public to be taken into account in assessing whether the earlier mark has reached the threshold of reputation laid down by the Court in General Motors. However, a relevant question arises when assessing detriment or unfair advantage, namely whether the earlier mark must also be known to the public concerned by the goods and services of the later mark, since otherwise it is difficult to see how the public will be in a position to associate the two. This issue is discussed in section III.3.2 below Goods and services covered Where the earlier mark is registered for a wide range of goods and services targeting different kinds of public, it will be necessary to assess reputation separately for each category of goods. In such cases the earlier mark may not have a reputation in relation to all of them, as for some of these goods it may not have been used at all, whereas for others it may not have reached the degree of knowledge necessary for the application of Article 8(5). Hence, if the evidence shows that the earlier mark enjoys partial reputation, i.e. the reputation only covers some of the goods or services for which it is registered, it is only to that extent that this mark may be protected under Article 8(5), and consequently, it is only these goods that may be taken into account for the purposes of the examination. 81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC(fig.) (EN), 621/2001 F1 FORMULA 1(fig.)/F1 FORMULA 1 (fig.) (EN) Relevant territory According to Article 8(5) CTMR, the relevant territory for establishing the reputation of the earlier mark is determined by reference to the territory of protection: the earlier mark must have a reputation in the territory where it is registered. Therefore, for national marks the relevant territory is the Member State concerned, whereas for CTMs the relevant territory is the European Union. In General Motors, the Court stated that a national trade mark cannot be required to have a reputation throughout the entire territory of the Member State concerned. It is sufficient if reputation exists in a substantial part of it. For the Benelux territory in particular, the Court held that a substantial part thereof may consist of a part of one of the Benelux countries (General Motors, paragraphs 28-29).However, the Court has not elaborated on what may be considered as a substantial part of the relevant territory. In the absence of a more detailed definition, when evaluating whether the part of the territory in question is a substantial one, account must be taken both of the size of the geographical area concerned and of the proportion of the overall population living there, since both these criteria may affect the overall significance of the specific territory. Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 352

353 Trade marks with reputation Even though earlier CTMs are not directly covered by the above judgment, the rule that the earlier mark cannot be required to have a reputation throughout the entire territory in which it is registered must equally apply to them, as there seems to be no reason why Community trade marks should be treated differently in this respect. Thus, a reputation in a substantial part of the Community should be sufficient. However, it is not yet clear whether the territory of one Member State or a substantial part thereof may be considered as a substantial part of the Community, as the proportions change considerably between the Benelux countries and the whole of the European Union, rendering thus the drawing of analogies less appropriate. On the other hand, there are two strong policy arguments in favour of the proposition that at least the territory of a Member State should suffice, namely the need to ensure at least the same level of protection for CTMs as for national marks (otherwise the CTM system would be less attractive to trade mark owners), and the necessity of giving Article 8(5) the same territorial scope as Article 8(1)(b) (if confusion in one Member State suffices for the rejection of a CTM application, reputation should not be treated any differently). This approach will be followed until this issue is further clarified by higher instances. Opponents often indicate in the notice of opposition that the earlier mark has a reputation in an area that extends beyond the territory of protection (e.g. a pan-european reputation is alleged for a national mark). In such a case the opponent s claim must be examined with regard to the relevant territory. 102/1999 NIKE /NIKE (ES), 1762/2001 NIKKEI/NIKKEI (EN) Similarly, the submitted evidence must specifically concern the relevant territory. For example, if the evidence relates to Japan for instance, or to regions not specifically defined, it will not be able to show reputation in the Community or in a Member State. Thus, figures concerning sales in the Community as a whole, or world-wide sales, are not apt for showing reputation in a specific Member State, if the relevant data are not broken down by territory. In other words, a wider reputation must also be specifically proved for the relevant territory if it is to be taken into account. R 799/ RODIO / RHODIA (FIG MARK) (EN), 81/2000 OLYMPIC / FAMILY CLUB BELMONT OLYMPIC (EN), 373/2000 INDIGO / INDIGO (EN), 516/2000 AQUARIUS / AQUARIUS (EN), 1762/2001 NIKKEI / NIKKEI (EN), 1112/2001 CHAMPION USA / CHAMP (EN) However, where reputation is claimed as extending beyond the territory of protection and there is evidence to this effect, this must be taken into account because it may re-enforce the finding of reputation in the territory of protection. Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 353

354 Trade marks with reputation Relevant point in time The opponent must show that the earlier mark had acquired a reputation by the filing date of the contested CTM application, taking account, where appropriate, of any priority claimed, on condition of course that such a claim has been accepted by the Office. 1807/2001 BREEZE/ARIZONA BREEZE (EN); 2096/2001 BUKO/BUKO (EN) In addition, the reputation of the earlier mark must subsist until the decision on the opposition is taken. However, it will be in principle sufficient for the opponent to show that his mark already had a reputation on the filing/priority date of the CTM application, while any subsequent loss of reputation is for the applicant to claim and prove. In practice, such an occurrence will be rather exceptional, since it presupposes a dramatic change of market conditions over a relatively short period of time. Where the opposition is based on an earlier application, there is no formal obstacle for the application of Article 8(5), which encompasses earlier applications by reference to Article 8(2). Although in most cases the earlier application will not have acquired sufficient reputation in so short a time, it cannot be a priori excluded that a sufficient degree of reputation is reached in an exceptionally rapid way. Also, the application may be for a mark which was already in use long before the application was filed, and has had sufficient time to acquire a reputation. In any event, as the effects of the registration are retroactive, the applicability of Article 8(5) to earlier applications cannot be regarded as a deviation from the rule that Article 8(5) only applies to earlier registrations, as concluded in section II above. In general, the closer to the relevant date the evidence is, the easier it will be to assume that the earlier mark had acquired reputation at that time. For this reason, the materials filed with a view to proving reputation must be dated, or at least clearly indicate when the facts attested therein took place. It follows that undated documents, or documents bearing a date added afterwards (e.g. hand-written dates on printed documents) will not be apt for giving reliable information about the material time. 2195/2000 TC (FIG) / TC (FIG) (EN) If the period elapsed between the latest evidence of use and the filing of the CTM application is quite significant, the relevance of the evidence should be carefully assessed by reference to the kind of goods and services concerned. This is because changes in consumer habits and perceptions may take some time to happen, usually depending on the particular market involved. For instance, the clothing market is strongly tied to yearly seasons and to the different collections issued every quarter, and this factor will have to be taken into account in assessing a possible loss of reputation in this particular field. Likewise, the market for Internet providers and e-commerce companies is very competitive and knows rapid growth, as well as rapid demise, which Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 354

355 Trade marks with reputation means that reputation in this area may be diluted faster than in other market sectors NEXT/NEXT EYE (EN), 1562/2002 LINEONE/Link One (EN) A similar question arises in the case of evidence that post-dates the filing date of the CTM application. Even though such evidence will not usually be sufficient on its own to prove that the mark had acquired a reputation when the CTM was filed, it is not appropriate to reject it as irrelevant either. Given that reputation is usually built up over a period of years and cannot simply be switched on and off, and that certain kinds of evidence (e.g. opinion polls, affidavits) are not necessarily available before the relevant date, as they are usually prepared only after the dispute arises, such evidence must be evaluated on the basis of its contents and in conjunction with the rest of the evidence. For example, an opinion poll conducted after the material time but showing a sufficiently high degree of recognition might be sufficient to prove that the mark had acquired a reputation on the relevant date if it is also shown that the market conditions have not changed (e.g., the same level of sales and advertising expenditure was maintained before such opinion poll was carried out). 531/2001 TELETHON/TELETOON (EN), 2101/2001 PYLORISET/Pyloritek, 1272/2002 TOD S(fig.)/TOD S (EN) 1.3. Assessment of reputation Relevant factors Apart from indicating that it cannot be inferred either from the letter or the spirit of Article 5(2) of the TM Directive that the trade mark must be known by a given percentage of the public, the Court also held that all relevant facts must be taken into consideration in assessing the reputation of the earlier mark, and in particular the market share held by the mark, the intensity, geographical extent and duration of its use, and the size of investment made by the undertaking in promoting it (General Motors, paragraphs 25 and 27). If these two statements are taken together, it follows that the level of knowledge required for the purposes of Article 8(5) cannot be defined in the abstract, but should be evaluated on a case-by-case basis, taking into account, not only the degree of awareness of the mark, but also any other fact relevant to the specific case, that is any factor capable of giving information about the performance of the mark in the market. Moreover, the relevant factors should be assessed not only with a view to establishing the degree of recognition of the mark by the relevant public, but also in order to ascertain whether the other requirements related to reputation are fulfilled, for example whether the alleged reputation covers a significant part of the territory concerned, or whether the reputation had indeed been acquired by the filing/priority date of the contested CTM application. Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 355

356 Trade marks with reputation It should also be noted that the same kind of test is applied for ascertaining whether the trade mark has acquired enhanced distinctiveness through use for the purposes of Article 8(1)(b), or whether the mark is well-known within the meaning of Article 6 bis of the Paris Convention, since the subject-matter of proof in all these cases is in substance the same, namely the degree to which the mark is known by the relevant public Trade mark awareness The statement of the Court that it is not necessary for the mark to be known by a given percentage of the public, cannot be taken in itself as meaning that figures of trade mark awareness are irrelevant for, or that they should be given a lower probative value in, the assessment of reputation. It only implies that percentages of awareness defined in the abstract may not be appropriate for all cases and that, as a consequence, it is not possible to fix a priori a generally applicable threshold of recognition, beyond which it should be assumed that the mark is reputed. Thus, even though not expressly listed by the Court among the factors to be taken into account for the assessment of reputation, the degree of recognition of the mark by the relevant public is directly relevant and can be particularly helpful in evaluating whether the mark is sufficiently known for the purposes of Article 8(5), provided of course that the method of its calculation is reliable. As a rule, the higher the percentage of trade mark awareness, the easier it will be to accept that the mark has a reputation. However, in the absence of a clear threshold, only if the evidence shows a high degree of trade mark awareness, will percentages of recognition be persuasive. Percentages alone are however not conclusive. Rather, as explained before, reputation has to be evaluated by making an overall assessment of all the factors relevant to the case. The higher the degree of awareness, the less additional evidence may be required for the proof of reputation. For example, percentages showing a degree of awareness between 87% and 97% of the interviewed persons, have been regarded as decisive for a finding of reputation, without this meaning that the relevant threshold should always be set so high. R 802/ DUPLO/DUPLO, 1389/1999 YVES ROCHER/YVES ROCHE (FR), 531/2000 GALP / GALP FOR INIMITABLE PEOPLE (FIG) (EN), 3215/2000 MON CHERI/MONTXERI (EN), 531/2001 TELETHON/TELETOON (EN), 1082/2001 KINDER/KINDER EM-EUKAL (EN) Where the evidence shows that the mark only enjoys a lesser degree of recognition, it should not be automatically assumed that the mark is reputed, which means that, most of the time, mere percentages will not be conclusive in themselves. In such cases, only if the evidence of awareness is coupled with sufficient indications as to the overall performance of the mark in the market, will it be possible to evaluate with a reasonable degree of certainty whether the mark is known by a significant part of the relevant public. Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 356

357 Trade marks with reputation 1243/2000 CAMPBELL S/CAMPBELL CATERING (EN), 1246/2000 MONTE/MONTE VERITAS (EN), 1756/2000 EUROBAIT/EUROBAITS (EN), 1969/2000 Club Med /Euro Med (EN), 1509/2001 CAPTAIN BIRDS EYE/CAPTAIN BYRD APERO (EN), 1527/2001 VIA DIGITAL/VIA PLUS (ES), 441/2002 BEBE/BÉBÉ (EN), 1272/2002 TOD S(fig.)/TOD S (EN) Market share The market share enjoyed by the products offered or sold under the mark and the position it occupies in the market, are valuable indications for the assessment of reputation, as they both serve to indicate the percentage of the relevant public that actually buys the goods and to measure the success of the mark against competitive products. By market share is understood the percentage of total sales obtained by a brand in a particular sector of the market. When defining the relevant market sector, the goods and services for which the mark has been used must be taken into account. If such goods and services are narrower than those for which the mark has been registered, a situation of partial reputation arises, similar to the one existing where the mark is registered for a variety of goods, but has acquired a reputation only for part of them. This means that in such a case, only the goods and services for which the mark has been actually used and acquired a reputation will be taken into account for the purposes of the examination. Thus, a very substantial market share, or a leader position in the market, will usually be a strong indication of reputation, especially if combined with a reasonably high degree of trade mark awareness. Conversely, a small market share will in most cases be an indication against reputation, unless there are other factors which suffice on their own to support such a claim. 2273/2000 BeachLife (fig) / BEACHLIFE (EN), 638/2001 MENTADENT / MEDIDENT (EN) Another reason why a moderate market share will not always be conclusive against reputation, is that the percentage of the public that in reality knows the mark may be much higher than the actual buyers of the relevant goods, as for example in the case of goods that are normally used by more than one user (e.g. family magazines or newspapers), or of luxury goods, which many may know, but few can buy (e.g. a high percentage of European consumers know the trade mark Ferrari for cars, but only few own one). For this reason, the market share given in the evidence should be assessed taking into account the particularities of the specific market. R 472/ BIBA/BIBA (FR) In certain cases it will not be easy to define the market share of the earlier mark, as for example when the exact size of the relevant market cannot be measured accurately, owing to peculiarities of the products or services concerned. In such cases, other similar indications may be of relevance, Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 357

358 Trade marks with reputation such as TV audience rates, as in the case of car-racing events and other spectacles of athletic or cultural nature. 81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC (EN), 621/2001 F1 FORMULA 1 (fig.)/ F1 FORMULA 1 (fig.) (EN) Intensity of use The intensity of use of a mark may be shown by reference to the volume of sales (i.e. the number of units sold) and the turnover (i.e. the total value of those sales) attained by the opponent for goods bearing the mark. Usually, the relevant figures correspond to sales effected in one year, but there may be cases where the time unit used is different. In evaluating the importance of a given turnover or volume of sales, account should be taken of how large the relevant market is in terms of population, as this has a bearing on the number of potential purchasers of the products in question. For example, the relative value of the same number of sales will be much bigger, for example, in Luxembourg than in Germany. 66/2000 MAGEFESA(fig)/MAGEFESA(fig) (ES) Moreover, whether or not a given volume of sales or amount of turnover is substantial will depend on the kind of product concerned. For example, it is much easier to achieve a high volume in the case of every-day, massconsumption goods, than in the case of luxurious or durable products that are bought rarely, without this meaning that in the former case more consumers have come into contact with the mark, as it is likely that the same person has bought the same product more than once. It follows that the kind, value and durability of the goods and services in question should be taken into consideration in determining the significance of a given volume of sales or amount of turnover. Figures of turnover and sales will be more useful as indirect indications that should be assessed in conjunction with the rest of the evidence, rather than as direct proof of reputation. In particular, such indications can be especially helpful for completing the information given by percentages as regards market-share and awareness, by giving a more realistic impression of the market. For example, they may reveal a very large amount of sales behind a not so impressive market share, which may be useful in assessing reputation in the case of competitive markets, where it is in general more difficult for a single brand to account for a substantial portion of the overall sales. On the other hand, where the market share of the products for which the mark is used is not given separately, it will not be possible to determine whether a given turnover corresponds to a substantial presence in the market or not, unless the opponent also submits evidence showing the overall size of the relevant market in terms of money, so that his percentage in it may be inferred. Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 358

359 Trade marks with reputation 958/1999 GRANT S/JOHN GRANT (EN), 1433/1999 OCEAN PEARL/OCEAN PEARL (EN) This does not mean that the importance of turnover figures or volume of sales should be underestimated, as both are significant indications of the number of consumers that are expected to have encountered the mark. Therefore, it cannot be excluded that a substantial amount of turnover or volume of sales may, in certain cases, be decisive for a finding of reputation, either alone, or in conjunction with very little other evidence. However, as this would be a deviation from the rule that reputation has to be evaluated by making an overall assessment of all factors relevant to the case, findings of reputation based almost exclusively on such figures should be generally avoided, or at least confined to exceptional cases that would really justify such an assumption. R 303/ MAGEFESA/MAGEFESA (ES), R 472/ BIBA/BIBA (FR) Geographical extent of use Indications about the territorial extent of use are mainly useful for determining whether the alleged reputation is widespread enough to cover a substantial part of the relevant territory, in the sense given in section above. In this exercise, account should also be taken of the density of population in the respective areas, as the ultimate criterion is the proportion of consumers knowing the mark, rather than the size of the geographical area as such. Similarly, what is important is awareness of the public of the mark rather than availability of products or services. A mark may therefore have a territorially wide-spread reputation on the basis of advertising, promotion, media reports, etc. In general, the more widespread the use, the easier it will be to conclude that the mark has passed the required threshold, whereas any indication showing use beyond a substantial part of the relevant territory will be a positive sign in the direction of reputation. Conversely, a very limited amount of use in the relevant territory will be a strong indication against reputation, as for example where the vast majority of the goods are exported to a third jurisdiction in sealed containers, directly from their place of production. 726/2001 LA MOLINERA/LA MOLISANA (EN) However, evidence of actual use in the relevant territory should not be regarded as a necessary condition for the acquisition of reputation, as what matters most is knowledge of the mark and not how it was acquired. Such a knowledge may be generated by e.g. intensive advertising prior to the launching of a new product, or in the case of important cross-border shopping fuelled by a significant price difference in the respective markets, a phenomenon often referred to as territorial spill-over of reputation from one territory to another. However, when it is claimed that such circumstances have occurred, the corresponding evidence must in fact demonstrate this. For Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 359

360 Trade marks with reputation example, it cannot be assumed, merely because of the principle of free trade in the European Union, that goods put in the market in Member State X have also penetrated the market of Member State Y in significant numbers. 1407/2001 IBUTOP/IBUSOL (EN) Duration of use Indications as to the duration of use are particularly useful for determining the longevity of the mark. The longer the mark has been used in the market, the bigger will be the number of consumers that is likely to have come into contact with it, and the more likely it is that such consumers will have been exposed to the mark more than once. For example, a market presence of 45, 50 or +100 years has been considered a strong indication of reputation. 105/1999 HOLLYWOOD/HOLLYWOOD (FR), 2/2000 PLANETA/PLANET-X (ES), 81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC (EN) The duration of use of the mark should not be inferred by mere reference to the term of its registration. Registration and use do not necessarily coincide, as the mark may have been put to actual use either before or after it was filed. Thus, where the opponent invokes actual use, going beyond the term of registration, he must prove that such use had indeed started before his mark was applied for. Nevertheless, a long registration period may sometimes serve as an indirect indication of a long presence on the market, as it would be unusual for the opponent to maintain a mark in force for many decades without any economic interest behind it. In the end, the decisive element is whether the earlier mark had acquired a reputation at the time of filing of the contested application. Whether that reputation also existed at some earlier point in time is legally irrelevant. Thus, evidence of continuous use up to the filing date of the application will be a positive indication in the direction of reputation. On the other hand, if the use of the mark was suspended over a significant period of time, or if the period elapsed between the latest evidence of use and the filing of the CTM application is quite long, it will be more difficult to conclude that the reputation of the mark survived the interruption of use, or that it subsisted until the filing date of the application (see also section above) Promotional activities The nature and size of the promotional activities undertaken by the opponent are useful indications in assessing the reputation of the mark, to the extent that these activities were undertaken to build-up a brand image and enhance trade mark awareness among the public Thus, a long, intensive and widespread promotional campaign may be a strong indication that the Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 360

361 Trade marks with reputation mark has acquired a reputation among the potential or actual purchasers of such goods, and may actually have become known beyond the circle of the actual purchasers of the goods. Even though it cannot be ruled out that a mark acquires a reputation ahead of any actual use, promotional activities will usually not be sufficient on their own for establishing that the earlier mark has indeed acquired a reputation (see also section III above). For example, it will be difficult to prove knowledge by a significant part of the public exclusively by reference to promotion or advertising, carried out as preparatory acts for the launching of a new product, as the actual impact of publicity on the perception of the public will be difficult to measure without reference to sales. In such situations, the only means of evidence available to the opponent is opinion polls and similar instruments, the probative value of which may vary depending of the reliability of the method used, the size of the statistical sample etc. (for the probative value of opinion polls, see also section III iv. below). The impact of the opponent s promotional activities may be shown either directly, by reference to the size of promotional expenditure, or indirectly, by way of inference from the nature of promotional strategy adopted by the opponent and the kind of medium used for the advertising of the mark. For example, advertising on a nation-wide TV channel or in a prestigious periodical should be given more weight than campaigns of a regional or local scope, especially if coupled with high audience or circulation rates. Likewise, the sponsoring of prestigious athletic or cultural events may be a further indication of intensive promotion, as such schemes often involve a quite considerable investment. 531/2000 GALP / GALP FOR INIMITABLE PEOPLE (FIG)(EN), 2096/2001 BUKO/BUKO (EN), 105/1999 HOLLYWOOD/HOLLYWOOD (FR) Furthermore, the contents of the advertising strategy chosen by the opponent can be useful for revealing the kind of image the opponent is trying to build-up for his brand. This may be of particular importance when assessing the possibility of detriment to, or of taking unfair advantage of, a particular image allegedly conveyed by the mark, since the existence and contents of such an image must be abundantly clear from the evidence submitted by the opponent (see also section III.3. below). R 283/ HOLLYWOOD / HOLLYWOOD (EN), 81/2000 OLYMPIC / FAMILY CLUB BELMONT OLYMPIC (EN) Other factors The Court has made clear that the above list of the factors is only indicative and underlined that all facts relevant to the particular case must be taken into consideration in assessing the reputation of the earlier mark (General Motors, paragraph 27). Other factors may be found in the case-law of the Court dealing with enhanced distinctiveness through use, or in the WIPO Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 361

362 Trade marks with reputation Recommendations on the protection of well-known marks. Thus, depending on their relevance in each case, the following may be added to the above factors: (i) Record of successful enforcement Records of successful enforcement of a mark against dissimilar goods or services are of importance because they may demonstrate that, at least in relation to other traders, there is acceptance of protection against dissimilar goods or services. Such records may consist of successful prosecution of complaints outside the courts, such as acceptance of cease and desist requests, delimitation agreements in trade mark cases, and the like. Furthermore, evidence showing that the reputation of the opponent s mark has been repeatedly recognised and protected against infringing acts by decisions of judicial or administrative authorities will be an important indication that the mark indeed enjoys a reputation in the relevant territory, especially where such decisions are recent. That effect may be re-enforced when the decisions of this kind are substantial in number (on the probative value of decisions, see section below). This factor is mentioned in Article 2(1)(b)(5) of the WIPO Recommendations. (ii) Number of registrations The number and duration of registrations and applications of the mark around Europe or the world, is also relevant, but in itself it is a much weaker indication of the degree of recognition of the sign by the relevant public. The fact that the opponent has many trade mark registrations and in many classes may indirectly attest to an international circulation of the brand, but cannot be decisive in itself as to the existence of a reputation. This factor is mentioned in Article 2(1)(b)(4) of the WIPO Recommendations, where the need of actual use is made clear: the duration and geographical area of any registrations, and/or any applications for registration, of the mark are relevant to the extent that they reflect use or recognition of the mark. 2195/2000 TC (FIG)/TC (FIG) (EN) (iii) Certifications and Awards Certifications, awards, and similar public recognition instruments usually provide information about the history of the mark, or reveal certain quality aspects of the opponent s products, but as a rule they will not be sufficient in themselves for establishing reputation and will be more useful as indirect indications. For example, the fact that the opponent is a holder of a royal warrant for many years may perhaps show that the mark invoked is a traditional brand, but cannot give first hand information about trade mark awareness. However, if the certification concerns facts that are related to the performance of the mark, their relevance will be much higher. This factor has Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 362

363 Trade marks with reputation been mentioned by the Court in Lloyd and Windsurfing Chiemsee in relation to the assessment of enhanced distinctiveness through use. 435/2001 FLORIS/FLORIS (EN) (iv) The value associated with the mark The fact that a mark is solicited by third companies for reproduction on their products, either as a trade mark, or as mere decoration, is a strong indication that the mark possesses a high degree of attractiveness and an important economic value. Thus, the extent to which the mark is exploited through licensing, merchandising and sponsoring, as well as the importance of the respective schemes, are useful indications in assessing reputation. This factor is mentioned in Article 2(1)(b)(6) of the WIPO Recommendations. 621/2001 F1 FORMULA 1 (fig.)/ F1 FORMULA 1 (fig.) (EN) 1.4. Proof of reputation Standard of proof The opponent must file evidence enabling the Office to reach a positive finding that the earlier mark has indeed acquired a reputation in the relevant territory. The wording used in Article 8(5) CTMR and Rule 16(2) IR is quite clear in this respect: the earlier mark deserves enlarged protection only if it is has a reputation. It follows that the evidence must be clear and convincing, in the sense that the opponent must clearly establish all facts necessary for concluding with safety that the mark is known by a significant part of the public. The reputation of the earlier mark must be established to the satisfaction of the Office and not merely assumed Burden of proof According to the second sentence of Article 74(1) CTMR, in inter partes proceedings the Office is restricted in its examination to the facts, evidence and arguments provided by the parties. It follows that, in assessing whether the earlier mark enjoys reputation, the Office may not take into account facts known to it as a result of its own private knowledge of the market, or conduct an ex-officio investigation, but should exclusively base its findings on the information and evidence submitted by the opponent. 842/2000 KOALA/KOALA (ES), KINDER / TIMI KINDERJOGHURT (EN) Exceptions to this rule apply where particular facts are so well-established that they can be considered as universally known, and thus are also presumed to be known to the Office (e.g., the fact that a particular country has a certain number of consumers, or the fact that food products target the general public). Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 363

364 Trade marks with reputation However, whether or not a mark has passed the threshold of reputation established by the Court in General Motors is not in itself a pure question of fact, since it requires the legal evaluation of several factual indications, and, as such, the reputation of the earlier mark may not be simply assumed to be a universally known fact. Rule 16(2) IR provides that the burden of putting forward and proving the relevant facts lies with the opponent, by expressly requiring him to provide evidence attesting that the earlier mark has a reputation. According to Rules 16(3) and 20(2) IR and the practice of the Opposition Division, such evidence may be submitted either together with the notice of opposition, or subsequent thereto, or, at the latest, within a period of four months from the date of notification of the opposition to the applicant. The opponent may also refer to facts and evidence submitted in the course of another opposition, provided that the relevant materials are indicated in a clear and unambiguous way, and that the language of proceedings is the same in both cases. If the evidence of reputation is not in the correct language, it will have to be translated into the language of the proceedings within the same period of four months, as required by Rules 17(2), 16(3) and 20(2) IR. However, in view of the volume of documents often needed for proving reputation, it is sufficient to translate only the material parts of long documents or publications. Similarly, it is not necessary to translate in their entirety documents or parts of documents that contain mainly figures or statistics the meaning of which is evident, as is often the case with invoices, order forms, diagrams, brochures, catalogues etc Evaluation of the evidence The basic rules on the evaluation of evidence are also applicable here: the evidence should be assessed as a whole i.e. each indication should be weighed-up against the others, whereas information confirmed by more than one source will generally be more reliable than facts derived from isolated references. Moreover, the more independent, reliable and well-informed the source of the information is, the higher the probative value of the evidence will be. Thus, information deriving directly from the opponent is unlikely to be enough on its own, especially if it only consists of opinions and estimates instead of facts, or if it is of an unofficial character and lacks objective confirmation, as for example when the opponent submits internal memoranda or tables with data and figures of unknown origin. 1509/2001 CAPTAIN BIRDS EYE/CAPTAIN BYRD APERO(fig) (EN), 559/2001 PRINCESS MARCELLA BORGHESE/CATHERINE BORGHESE (fig) (IT), 1978/2001 and 1977/2001 BENJAMIN/BENJAMIN(fig) (ES), 638/2001 MENTADENT/MEDIDENT (EN), 1433/1999 OCEANS PEARL/OCEAN PEARL (EN), 586/2000 ADIG/ADEC (EN), 1296/2000 TWIX/TWIX (EN), 441/2002 BEBE/BÉBÉ (EN), 435/2001 FLORIS/FLORIS Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 364

365 Trade marks with reputation (EN), 1246/2000 MONTE/MONTE VERITAS (EN), 1243/2000 CAMPBELL S et al./campbell CATERING (EN) However, if such information is publicly available or has been compiled for official purposes and contains information and data that have been objectively verified, or reproduces statements made in public, its probative value is generally higher. 81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC (EN) 314/2000 SEMCO/SEMCO (EN) As regards its contents, the more indications the evidence gives about the various factors from which reputation may be inferred, the more relevant and conclusive it will be. In particular, evidence which as a whole gives little or no quantitative data and information will not be apt to provide indications about vital factors, such as trade mark awareness, market share and intensity of use and, consequently, will not be sufficient to support a finding of reputation. 586/2001 INFOVIA/VIA PLUS (ES), 1527/2001 VIA DIGITAL/VIA PLUS (ES), 1531/2001 LLOYD/EURO LLOYDS (EN), 1661/2001 ARCOIRIS/RAINBOW (EN), 1978/2001 and 1977/2001 BENJAMIN/BENJAMIN (ES), 2080/2001 TELDAT/TELDACON (EN), Means of evidence There is no direct indication in the Regulations as to which kind of evidence is more appropriate for proving reputation, as for instance the one in Rule 22(3) IR about evidence of use. The opponent may avail himself of all the means of evidence of Article 76 CTMR, provided they are capable of showing that the mark has indeed the required reputation. The following means of evidence are more frequently submitted by opponents in Opposition proceedings before the Office 2 : (i) (ii) (iii) (iv) (v) (vi) (vii) (viii) (ix) (x) Sworn or affirmed statements; Decisions of Courts or Administrative authorities; Decisions of the Office; Opinion polls and market surveys; Audits and inspections; Certifications and awards; Articles in the press or in specialised publications; Annual reports on economic results and company profiles; Invoices and other commercial documents; Advertising and promotional material. Evidence of this kind may also be submitted under Article 8(1)(b) CTMR in order to prove that the earlier mark has obtained a higher degree of distinctiveness, or under Article 8(2)(c) in relation to well-known marks. 2 the listing order does not reflect their relative importance or probative value. Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 365

366 Trade marks with reputation (i) Sworn or affirmed statements. Pursuant to Article 76(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. Therefore, such evidence is admissible if it fulfils the formal requirements laid down by the relevant national law, and this regardless of the term used by the opponent for their description or translation ( Affidavit, Statutory Declaration, Sworn Statement etc.). Thus, if the national law does not make its admissibility dependent on the capacity in which the person gives the evidence, statements of this kind are admissible independently of whether the declaration is made by the opponent himself, or by a director of his company, or by one of his employees. The weight and probative value to be attached to 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. R 601/ LIFE/IT S A WONDERFUL LIFE, R 1164/ THERMOVISION/THERMAL VISION LAIRD As a rule, affidavits will be of greater value if the information they contain is clear, it relates to specific facts and is supported by objective exhibits or attachments, the veracity of which is also affirmed. Conversely, if the declaration merely contains vague or unsupported statements, or subjective evaluations and opinions, or if the source of the information is not revealed, its probative value will be much lower. 1433/1999 OCEANS PEARL/OCEAN PEARL (EN), 1296/2000 TWIX/TWIX (EN), 441/2002 BEBE/BÉBÉ (EN), 435/2001 FLORIS/FLORIS (EN), 1509/2001 CAPTAIN BIRDS EYES/CAPTAIN BYRD APERO (EN), 1756/2000 EUROBAIT/EUROBAITS (EN) 1446/2000 X-CEL/XCELL TECHNOLOGY (EN), 1458/2001 DB/DB SYSTEME (EN), 1135/2001 SOFTLAN/SOFTLAN (DE) (ii) Decisions of national Authorities and Courts Opponents often invoke decisions of national authorities or Courts which have accepted the reputation of the earlier mark. Even though national decisions are admissible evidence and may have evidentiary value, especially if they originate from a Member State the territory of which is also relevant for the opposition at hand, they are not binding for the Office, in the sense that it is not mandatory to follow their conclusion. R 34/ LASTING PERFORMANCE (EN) Since such decisions may serve as indications of the existence of reputation and of the record of successful enforcement of the mark, their relevance Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 366

367 Trade marks with reputation should be addressed and examined. Relevance should be given to the type of proceedings involved, to whether the issue was in fact reputation in the sense of Article 8 (5), to the level of the court, as well as to the number of such decisions. 730/2002 BIO/BIO CLESA (ES) It should be borne in mind that there might be differences between the substantive and procedural conditions applicable in national proceedings and those applied in opposition proceedings before the Office. Firstly, there may be differences as to how the requirement of reputation is defined or interpreted. Secondly, the weight the Office gives to the evidence is not necessarily the same as the weight given to it in national proceedings. Furthermore, national instances may be able to take into account ex-officio facts known to them directly, whereas the Office may not, pursuant to Article 74 CTMR. 435/2001 FLORIS/FLORIS (EN) For these reasons, the probative value of national decisions will be considerably enhanced if the conditions of law and fact on the basis of which they were taken are made abundantly clear. This is because, in the absence of these elements, it will be more difficult both for the applicant to exercise his right of defence and for the Office to assess its relevance with a reasonable degree of certainty. Similarly, if the decision has not yet become final, or if it is outdated due to the time that has lapsed between the two cases, its probative value will be diminished accordingly. 842/2000 KOALA/KOALA (ES), 2337/2001 BREITLING/(FIG) (ES). Consequently, the probative value of national decisions should be assessed on the basis of their contents and it may vary depending on the case. In one case an opinion poll showing a high degree of knowledge of the mark amongst the public, together with two decisions of national courts were considered sufficient to show reputation, as was in another case one decision of a national office on its own. Conversely, in a third case two decisions of a national trade mark office were not considered persuasive enough. 1389/1999 YVES ROCHER/YVES ROCHE (FR), 102/1999 NIKE/NIKE (ES), 2688/2000 JOHN SMITH/BETTY SMITH (EN). (iii) Office decisions The opponent may also refer to earlier decisions of the Office, on condition that such a reference is clear and unambiguous, and that the language of the proceedings is the same. Otherwise, the opponent must also file a translation of the decision within the four-month period to file further facts, evidence and arguments, in order to allow to the applicant exercise his right of defence. Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 367

368 Trade marks with reputation As regards the relevance and probative value of previous Office decisions, the same rules as for national decisions apply. Even where the reference is admissible and the decision is relevant, the Office is not bound to come to the same conclusion and must examine each case on its own merits. It follows that previous Office decisions only have a relative probative value and should be evaluated in conjunction with the rest of the evidence, especially where the reference of the opponent does not extend to the materials filed in the first case, i.e. where the applicant has never had a chance to comment on them, or where the time that has elapsed between the two cases is quite long. (iv) Opinion polls and market surveys Opinion polls and market surveys are the most suitable means of evidence for providing information about the degree of knowledge of the mark, the market share it has, or the position it occupies in the market in relation to competitive products. The probative value of opinion polls and market surveys is determined by the status and degree of independence of the entity conducting it, by the relevance and the accuracy of the information it provides, and by the reliability of the applied method. More particularly, in evaluating the credibility of an opinion poll or market survey, the Office needs to know: (a) (b) (c) (d) Whether or not it has been conducted by an independent and recognised research institute or company, in order to determine the reliability of the source of the evidence. The number and profile (sex, age, occupation and background) of the interviewees, in order to evaluate whether the results of the survey are representative of the different kinds of potential consumers of the products in question. In principle, samples of interviewees are considered sufficient, provided they are representative for the class of consumer concerned. The method and circumstances under which the survey was carried out and the complete list of questions included in the questionnaire. It is also important to know how and in which order the questions were formulated, in order to ascertain whether the respondents have been confronted with leading questions. Whether the percentage reflected in the survey corresponds to the total amount of persons questioned or only to those who actually replied. 1360/1999 CHARM/CHARMS (EN), 441/2002 BEBE/BÉBÉ (EN), 531/2001 TELETHON/TELETOON (EN), 1082/2001 KINDER/KINDER EM-EUKAL (EN), 1272/2002 TOD S(fig.)/TOD S (EN) Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 368

369 Trade marks with reputation Unless the above indications are present, the results of a market survey or opinion poll should not be considered of high probative value, and will not be in principle sufficient on their own to support a finding of reputation. Likewise, if the above indications are given, but the reliability of source and method are questionable or the statistical sample is too small, or the questions were leading, the credibility of the evidence will be diminished accordingly. For example, a statistical sample consisting of 157 respondents, concerning swimwear in the Netherlands, has been considered quite small in relation to the overall population of that country. 2273/2000 BEACHLIFE/BEACHLIFE (EN) Conversely, opinion polls and market surveys that fulfil the above requirements (independence and trustworthiness of source, reasonably large and widespread sample and reliable method) will be a strong indication of reputation, especially if they show a high degree of trade mark awareness. 531/2000 GALP/GALP (EN), 1389/1999 YVES ROCHER/YVES ROCHE (FR), 314/2000 SEMCO/SEMCO (EN), 3215/2000 MON CHERI/MONTXERI (EN) (v) Audits and inspections Audits and inspections of the opponent s undertaking may provide useful information about the intensity of use of the mark, as they usually comprise data on financial results, volumes of sales, turnovers, profits etc. However, such evidence will be pertinent only if it specifically refers to the goods sold under the mark in question, rather than to the opponent s activities in general. Audits and inspections may be carried out on the initiative of the opponent himself, or may be required by company law and/or financial regulations. In the former case, the same rules as for opinion polls and market surveys apply, i.e. the status of the entity conducting the audit and the reliability of the applied method will be of essence for determining its credibility, whereas the probative value of official audits and inspections will be as a rule much higher, since they are usually conducted by a state authority or by a recognised body of auditors, on the basis of generally accepted standards and rules. (vi) Certifications and awards This kind of evidence includes certifications and awards by public authorities or official institutions, such as chambers of commerce and industry, professional associations and societies, consumer organisations etc. The reliability of certifications by authorities is generally high, as they emanate from independent and specialised sources, which attest facts in the course of their official tasks. For example, the average circulation figures for periodicals issued by the competent press-distribution associations is conclusive evidence about the performance of a mark in the sector. Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 369

370 Trade marks with reputation R 472/ BIBA/BIBA (FR) The same applies to quality certifications and awards granted by such authorities, as the opponent usually has to meet objective standards in order to receive the award. Conversely, prizes and awards offered by unknown entities, or on the basis of unspecified or subjective criteria, should be given very little weight. The relevance of a certification or award to the specific case largely depends on its contents. For example, the fact that the opponent is a holder of an ISO 9001 quality certificate, or of a royal warrant, does not automatically mean that the sign is known to the public. It only means that the opponent s goods meet certain quality or technical standards or that he is a supplier of a royal house. However, if such evidence is coupled with other indications of quality and market success, it may lead to the conclusion that the earlier mark has a reputation. 2080/2001 TELDAT/TELDACON (EN), 435/2001 FLORIS/FLORIS (EN), 2/2000 PLANETA/PLANETA X (ES) (vii) Articles in the press or in specialised publications The probative value of press articles and other publications concerning the opponent s mark mainly depends on whether such publications are covert promotional matter, or if, on the contrary, they are the result of independent and objective research. Hence, if such articles appear in publications of a high status or are written by independent professionals, they will have a quite high value, as for example when the success of a specific brand becomes the object of a case study in specialised journals or in scientific publications. 2/2000 PLANETA/PLANETA X (ES) 1203/2001 SAS/SAS & EUROBONUS (EN), 1509/2001 CAPTAIN BIRDS EYES/CAPTAIN BYRD APERO (EN), 314/2000 SEMCO/SEMCO (EN) (viii) Annual reports and company profiles This type of evidence encompasses all kinds of internal publications giving varied information about the history, activities and perspectives of the opponent s company, or more detailed figures about turnovers, sales, advertising etc. To the extent that such evidence derives from the opponent and is mainly intended to promote his image, its probative value will mostly depend on its contents and the relevant information should be treated with caution, especially if it mainly consists of estimates and subjective evaluations. Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 370

371 Trade marks with reputation However, where such publications are circulated to clients and other interested circles and contain objectively verifiable information and data, which may have been compiled or revised by independent auditors (as is often the case with annual reports), their probative value will be substantially enhanced. 81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC (EN) 314/2000 SEMCO/SEMCO (EN) (ix) Invoices and other commercial documents All kinds of commercial documents may be grouped under this heading such as invoices, order forms, distribution and sponsoring contracts, samples of correspondence with clients, suppliers or associates etc. Documents of this sort may provide a great variety of information as to the intensity of use, the geographical extent and duration of the use of the mark. Even though the relevance and credibility of commercial documents is not disputed, it will be generally difficult to prove reputation on the basis of such materials alone, given the variety of factors involved and the volume of documents required. Furthermore, evidence such as distribution or sponsoring contracts and commercial correspondence are more apt for giving indications about the geographical extent or the promotional side of the opponent s activities, than to measure the success of the mark in the market and thus may only serve as indirect indications of reputation. 516/2000 AQUARIUS/AQUARIUS (EN), 531/2000 GALP/GALP (EN), 1246/2000 MONTE/MONTE VERITAS (EN), 2688/2000 JOHN SMITH/BETTY SMITH (EN) (x) Advertising and promotional material This kind of evidence may take various forms, such as press cuttings, advertising spots, promotional articles, offers, brochures, catalogues, leaflets etc. In general, such evidence cannot be conclusive of reputation on its own, due to the fact that it cannot give much information about actual trade mark awareness. 586/2001 INFOVIA/VIA PLUS (ES), 1135/2001 SOFTLAN/SOFTLAN (DE), 1527/2001 VIA DIGITAL/VIA PLUS (ES), 1531/2001 LLOYD/EURO LLOYDS (EN), 1661/2001 ARCOIRIS/RAINBOW (EN), 1978/2001 and 1977/2001 BENJAMIN/BENJAMIN (ES), 2080/2001 TELDAT/TELDACON (EN). However, some conclusions about the degree of exposure of the public to advertising messages concerning the mark may be drawn by reference to the kind of the medium used (national, regional, local) and to the audience rates or circulation figures attained by the relevant spots or publications, if of course this kind of information is available. R 472/ BIBA/BIBA (FR), 2096/2001 BUKO/BUKO (EN) Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 371

372 Trade marks with reputation In addition, such evidence may give useful indications as regards the kind of goods covered, the form in which the mark is actually used and the kind of image the opponent is trying to build-up for his brand. For example, if the evidence shows that the earlier registration for which reputation is claimed covers a device, but in reality this device is used combined with a word element, it would not be consistent to accept that the device by itself has a reputation. 1835/2000 (fig. TIGER )/(fig. PUMA ) (EN), 557/2001 SEPHORA (fig.)/hydra FARMACOSMETICI (fig.) (EN) Conclusion In general, the more diverse and complete the evidence is, the easier it will be to accept that the earlier mark has indeed acquired a reputation. For example, the following materials submitted in a case have been considered largely sufficient for establishing the reputation of the earlier mark: 1. background information about the history of the trade mark and the marketing milestones since 1970; 2. an explanation of the advertising strategy with reference to the medium used and the audience rates reached (TV spots seen by 82% to 92% of the public in the relevant territory); 3. a video showing different publicity spots; 4. an assortment of advertisements in magazines; 5. photos of diverse sales points; 6. samples of packaging; 7. a study showing the development in market share from 1996 to 1998; 8. accounts of the marketing expenditure for the last 5 years; 9. three omnibus surveys (91%, over people questioned); 10. an assortment of invoices from various years. Reputation was considered proved mainly through the combination of the information given by documents 1, 2, 7, 8 and /2001 BUKO/BUKO (EN) 2. Identity similarity of signs The Court has dealt with the notion of similarity of signs only in relation to likelihood of confusion, but at the same time it has indicated that evidence of confusion is not necessary for the purposes of Article 5(2) of the TMD (and hence for Article 8(5) CTMR), as likelihood of confusion is not a condition for its application (Sabel, paragraph 20). Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 372

373 Trade marks with reputation As regards protection against dissimilar goods, the Court suggested in General Motors that a possible association of the two signs, enhanced by the reputation of the earlier mark, may suffice for its distinctiveness or repute to be detrimentally affected, by stating that it is where there is a sufficient degree of knowledge of that mark that the public, when confronted with the later trade mark, may possibly make an association between the two trade marks, and the earlier mark may consequently be damaged. (General Motors, paragraph 23). It follows that an association of this kind may suffice for damaging the earlier mark and, thus, may entail the application of Article 8(5), even if it is not enough for giving rise to confusion. 2726/2000 PRINCE(fig)/PRINCESSE ROUGE (ES), 2687/2000 TORRES(fig)/TORRE ORIA(fig), 1602/2001 DIABLO/TEAM CLUDIO CHIAPUCCI EL DIABLO(fig) (IT) In view of these assumptions the following practice rules can be established as regards the issue of similarity of signs in the context of Article 8(5): Firstly, the ordinary test applied in the comparison of signs under Article 8(1)(b) for determining the extent to which the marks in dispute are similar, visually, phonetically and conceptually, must also be used in the context of Article 8(5). If the signs are identical or similar, the examination thereafter is not directed to determine whether there is a likelihood of confusion, but rather to the finding of whether or not there is detriment or unfair advantage to the distinctiveness or reputation. Hence, any evaluation of the various points of resemblance between the signs carried out in the global assessment of likelihood of confusion, is not pertinent for the purposes of Article 8(5). For example, saying that there are enough differences between the signs to prevent the public from being confused is not a valid assumption under 8(5), simply because confusion is not relevant in this context. Of course, where the marks are so similar that may be confused, they are necessarily similar enough to also be associated with each other. On the other hand, where the dissimilarities are such that there is no risk that the public will associate or otherwise make a link between the two signs, the application of Article 8(5) can be safely excluded. Thus, the only grey area that appears to result from the reference to association as the cause of detriment or unfair advantage, is the case where although confusion per se is excluded, the marks are similar enough to be associated, in the sense that perception of the one will bring to mind the memory of the other. However, since such an association may suffice for damaging the earlier mark, it should not be excluded that, under certain circumstances, a similarity that is not enough for the application of Article 8(1)(b), may nonetheless be sufficient for the purposes of Article 8(5). Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 373

374 Trade marks with reputation 81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC (EN) 3. Detriment Unfair advantage 3.1. Protected subject-matter Article 8(5) does not protect the reputation of the earlier mark as such, in the sense that it does not intend to prevent the registration of all marks identical with or similar to a mark with reputation. In addition, there must be a likelihood that use of the mark subject to opposition without due cause would take unfair advantage of, or would be detrimental to, the distinctive character or the repute of the earlier mark. The Court confirmed this by stating that once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause. (General Motors, paragraph 30). The Court did not set out in more detail exactly what would count as detriment or unfair advantage, even though it stated in Sabel that Article 8(5) does not require evidence of likelihood of confusion, thereby stating the obvious, namely that the enlarged protection afforded to marks with reputation is not concerned with their origin function (Sabel, paragraph 20). However, in a series of previous decisions 3 the Court stated that, apart from indicating origin, a trade mark may also exercise other functions worthy of protection. More particularly, it confirmed that a trade mark can offer a guarantee that all the goods coming from a single undertaking have the same quality (guarantee function) and that it can serve as an advertising instrument by reflecting back the goodwill and prestige it has acquired in the market (advertising function). It follows that trade marks do not only serve to indicate the origin of a product, but also to convey a certain message or image to the consumer, which is incorporated in the sign mostly through use and, once acquired, forms part of its distinctiveness and repute. In most cases of reputation these features of the trade mark will be particularly developed, as the commercial success of a brand is usually based on product quality, successful promotion, or both and, for this reason, they will be especially valuable to the trade mark owner. This added value of a mark with reputation is precisely what Article 8(5) intends to protect against undue detriment or unfair advantage. Hence, the notion of unfair detriment extends to all cases where the use of the application is likely to have an adverse effect on the earlier mark, in the sense that it would diminish its attractiveness (detriment to distinctiveness), or would devalue the image it has acquired among the public (detriment to 3 C-10/89 SA CNL-SUCAL NV v. HAG GF AG, C-427,429,436/93 Bristol-Myers Squibb v. Paranova A/S, C-349/95 Frits Loendersloet Internationale v. George Ballantine & Son Ltd., C-337/95 Parfums Christian Dior SA v. Evora and C-63/97 Bayerische Motorenwerke AG v. Ronald Karel Deenik. Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 374

375 Trade marks with reputation repute), whereas the notion of unfair advantage covers cases where use of the opposed mark is likely to result in a misappropriation of its attractive powers (unfair advantage of distinctiveness) or an exploitation of its image and prestige (unfair advantage of repute). Given also that a very strong reputation is both easier to harm and more tempting to take advantage of, owing to the great value it incorporates, the Court underlined that the stronger the earlier mark s distinctive character and reputation, the easier it will be to accept that detriment has been caused to it (General Motors, paragraph 30). Even if the Court did not say so expressly, the same must be accepted as regards the unfair advantage that the applicant might enjoy at the expense of the earlier mark Assessment of detriment unfair advantage The Court did not deal in General Motors with the assessment of detriment and unfair advantage in great detail, as this issue was not part of the question referred to it. It only stated that it is where there is a sufficient degree of knowledge of that mark that the public, when confronted with the later trade mark, may possibly make an association between the two trade marks, and the earlier mark may consequently be damaged. (General Motors, paragraph 23). Even though this statement is too limited to serve as a basis for a full-scale analysis of the condition of detriment, it gives at least an important indication, namely that detriment or unfair advantage must be the consequence of an association of the conflicting marks in the minds of the public, made possible by the similarities between the marks and enhanced by the reputation of the earlier sign. The need for an association capable of causing detriment, has a two-fold consequence for the assessment of detriment or unfair advantage: Firstly, if the alleged detriment or unfair advantage is not the result of an association between the marks, but is due to other, extraneous reasons, it is not actionable under 8(5). Secondly, if in view of the overall circumstances of the case, an association between the marks is not likely, the necessary link between the use of the later mark and the detrimental effect will be missing. Thus, the similarities between the signs and the reputation of the earlier mark must be of such a nature and degree, as to allow for an association of the two by the consumer, in the sense that perception of the one will bring to mind the memory of the other. Furthermore, as the Court observed, an association between the marks requires that the part of the public which is already familiar with the earlier mark is also exposed to the later mark. This will be easier to establish where the earlier mark is known to the public at large, or where the purchasers of the respective goods largely overlap. However, in cases where the goods are further removed from each other and such a connection between the respective publics is not obvious, the opponent must justify why the marks will be associated, by reference to some other link between his Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 375

376 Trade marks with reputation activities and those of the applicant, as for example where the earlier mark is exploited outside its natural market sector, e.g. by licensing or merchandising. 621/2001 F1 FORMULA 1/F1 FORMULA 1 (EN) From the foregoing it follows that the evaluation of detriment or unfair advantage must be based on an overall assessment of all the factors relevant to the case (including in particular the similarity of signs, the reputation of the earlier mark, the respective consumer groups and market sectors), with a view to determining whether the marks may be associated in a way which may prove injurious to the earlier trade mark, or which may allow the application to unduly profit from it. Until more detailed principles are developed by higher instances, the above will provide the framework for the assessment of detriment and unfair advantage in the context of Article 8(5) CTMR, taking also into account the peculiarities of the various possible forms of detriment and unfair advantage discussed below Forms of detriment unfair advantage Thus, Article 8(5) applies if any of the following four alternative requirements is fulfilled, namely if use of the application would (a) cause unfair detriment to the distinctiveness (b) cause unfair detriment to the repute (c) take unfair advantage of the distinctiveness, or (d) take unfair advantage of the repute, of the earlier mark Detriment to distinctiveness The distinctiveness of the earlier trade mark will be detrimentally affected if the public ceases to associate it with a given range of goods or services originating from a single source and starts associating it with different goods, having distinct origins. Such an association can dilute the trade mark s ability to identify a single undertaking, without this necessarily resulting in confusion as to origin, and is likely to diminish its capacity to stimulate the desire of the public to buy the products for which it is registered. Such a situation is commonly known as dilution by blurring, and occurs when the trade mark is no longer capable of evoking in the mind of the public an immediate association with the products it covers. This capacity may be reduced or lost by the fact that persons other than the proprietor use the same or a similar sign for products other than those for which it is registered. This leads to an erosion of distinctive character caused by the proliferation of parasitic marks which, although not debasing the original trade mark, are so numerous that they may deprive the trade mark of its distinctive character and hence of its attractiveness. Such an erosion of distinctiveness cannot simply occur where the earlier mark has a reputation and is identical with or similar to the mark applied for, as this would involve an automatic and indiscriminate recognition of a likelihood of Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 376

377 Trade marks with reputation dilution for all trade marks of repute and would negate the purpose of the condition of proving detriment. In addition, the earlier mark must possess an exclusive character, in the sense that it should be associated by the consumers with a single source of origin, since it is only in this case that a likelihood of detriment to distinctiveness may be envisaged. If the same sign, or a variation thereof, is already in use in connection with a plethora of different goods, there can be no immediate link with any of the products it distinguishes, and thus there will be little or no room for further dilution. Zero or virtually zero dilution does not suffice to establish a likelihood of dilution within the meaning of Article 8(5) CTMR, because in such a case the detriment would not be likely, as required by the law, but mere speculation. R 283/ HOLLYWOOD/HOLLYWOOD (FR) Thus, if the applicant shows that the earlier sign is commonplace and is already used by different undertakings in various sectors of the market, he will also have successfully refuted the existence of a likelihood of dilution. Even the fact that the opponent did not react to other registrations of the same or a similar sign in different classes may indicate that he is not too concerned about whether consumers will no longer associate the mark exclusively with his product. R 283/ HOLLYWOOD/HOLLYWOOD (FR) Similarly, it will be difficult to accept that the attractiveness of the earlier mark risks being diluted if its inherent distinctiveness is not very strong. If, for example, the mark is suggestive of a characteristic shared by a wide range of goods, the consumer is more likely to associate it with the specific feature of the product it alludes to, rather than with another mark. This will be particularly true where the respective goods are so far removed from each other that a possibility of association between them is even less probable. R 802/ DUPLO/DUPLO, R 303/ MAGEFESA/MAGEFESA (ES) Detriment to repute The notion of unfair detriment to repute, also often referred to as dilution by tarnishing relates to situations where use of the application without due cause is likely to devalue the image or the prestige that a mark with reputation has acquired among the public. The reputation of the earlier trade mark may be tainted or debased in this way, either when it is reproduced in an obscene, degrading or inappropriate context, or in a context which is not inherently unpleasant, but which proves to be incompatible with a special image the earlier trade mark has acquired in the eyes of the public, due to the promotional efforts of its owner. Thus, the opponent must show, or at least convincingly argue, that use of the applicant s trade mark would prompt such inappropriate or negative mental associations with the earlier trade mark, or associations conflicting with the image it has acquired in the market. However, in the case of detriment to a Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 377

378 Trade marks with reputation special image vested in the mark, the opponent will also have to prove that, apart from being known by a significant part of the public, his mark has indeed acquired this special image by virtue of its use and promotion, which is likely to be harmed if the application is used for the goods applied for. 105/1999 HOLLYWOOD/HOLLYWOOD (FR), 81/2000 OLYMPIC / FAMILY CLUB BELMONT OLYMPIC (EN) R 283/ HOLLYWOOD / HOLLYWOOD (FR) In all such cases, there is an association, either at the level of signs, or at the level of goods, which is injurious to the earlier trade mark and may take the following forms: (a) (b) (c) The application sign reproduces the earlier mark in such a fashion that its word or figurative element is amended or altered in a negative or offensive way. The application is used in relation to offensive goods, or covers goods which evoke negative or unpleasant mental associations, which conflict with those generated by the legitimate use of the earlier mark. The application is used for goods of poor quality, or which are incompatible with a special quality or image associated with the earlier trade mark. For example, it has been held that use of a famous publisher s mark in connection with adult material can seriously harm its prestige, especially since the earlier mark was reproduced in the application sign in combination with the letter X, i.e. together with an indication which is in itself allusive to adult content. Likewise, it has been held that use of a mark which is reputed in the field of pharmaceuticals in connection with substances having a corrosive effect, such as bleaching, polishing and abrasive preparations, could have a negative influence on its perception by the public, by creating unpleasant associations. 2/2000 PLANETA/PLANET-X (ES), R 1007/ LIPOSTATIN/LIPOSTAT (EN) As regards use which is incompatible with a special image of the earlier mark, it has been held that if a mark that is associated in the minds of the public with an image of health, dynamism and youth is used by the applicant for tobacco products, the negative connotation conveyed by the latter would contrast strikingly with the image of the former. Thus, it is likely to damage the earlier mark s repute. R 283/ HOLLYWOOD/HOLLYWOOD (FR) On the other hand, the tarnishing of the image of the earlier mark has not been considered probable where the goods are so different from each other that an association between the signs would seem highly unlikely and the distinctive character of the earlier mark is quite low. For example, it has been Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 378

379 Trade marks with reputation held that use of the word DUPLO for office equipment could not tarnish the image of chocolate bars of the same brand. Similarly, the use of the word VISA for cosmetics could not harm in any way the repute of the same sign with regard to financial services. R 802/ DUPLO/DUPLO, 725/2001 VISA/VISA (EN) Taking unfair advantage of distinctiveness The notion of unfair advantage of distinctiveness covers cases where the applicant benefits from the attractiveness of the earlier right by affixing on his goods a sign which is widely known in the market, misappropriating thus its attractive powers and advertising value. This may lead to unacceptable situations of commercial parasitism where the applicant is allowed to take a free-ride on the investment of the opponent in promoting and building-up a goodwill for his mark, as it may stimulate the sales of the applicant s products to an extent which is disproportionately high in comparison with the size of his promotional investment. Such a misappropriation of the distinctiveness of the earlier mark presupposes an association between the respective marks, which renders possible the transfer of attractiveness to the application s sign. An association of this kind will be more likely in the following circumstances: (a) Where the earlier mark possesses a very strong distinctive character, because in such a case it will be both more tempting for the applicant to try to benefit from its value and easier to associate it with the application sign, as such marks will be recognised in almost any context, exactly because of their outstanding distinctiveness. 81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC (EN) (b) Where there is a special connection between the goods which allows for some of the qualities of the opponent s goods to be attributed to those of the applicant. This will be particularly so in the case of neighbouring markets, where a brand extension would seem more natural, as in the example of pharmaceuticals the healing properties of which may be presumed for example in cosmetics bearing the same mark. Conversely, such a link was not found to exist between credit card services and cosmetics, as it was thought that the image of the former is not transferable to the latter, despite the fact that their respective users largely coincide. R 1007/ LIPOSTATIN/LIPOSTAT (EN), 725/2001 VISA/VISA (EN) (c) Where, in view of its special attractiveness, the earlier mark may be exploited even outside its natural market sector, e.g. by licensing or merchandising. In this case, if the applicant uses a sign identical or Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 379

380 Trade marks with reputation similar to the earlier mark, for goods for which the latter is already exploited, he will obviously profit from its de facto value in that sector. 621/2001 F1 FORMULA 1/F1 FORMULA 1 (EN) It should be noted that the applicant s benefit does not have to be intentional to be sanctioned. Bad faith is not in itself a condition for the application of Article 8(5), which only requires that the advantage be unfair, in that there is no justification for the applicant s profit. However, where the evidence shows that the applicant is clearly acting in bad faith, there will be a strong indication of unfair advantage. The existence of bad faith may be inferred by various factors, such as an obvious attempt by the applicant to imitate an earlier sign of great distinctiveness as closely as possible, or where there is no apparent reason why he chose for his goods a mark which includes such a sign. R 303/ MAGEFESA/MAGEFESA (ES), 102/1999 NIKE/NIKE (ES), 1381/1999 AIR ONE/AIR ONE (IT), 81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC (EN) Nor is it necessary for the opponent to show that the applicant s benefit is detrimental to his economic interests, as in most cases the borrowed distinctiveness of the application s sign will principally affect the applicant s direct competitors, i.e. traders dealing in identical or similar goods as him, by putting them at a competitive disadvantage. However, the possibility of simultaneous detriment to the opponent s interests should not be ruled out completely, especially in instances where use of the application s sign could affect the opponent s merchandising schemes, or would hinder his plans to penetrate a new market sector Taking unfair advantage of repute The notion of unfair advantage of repute covers situations where the application may profit from the renown of the opponent s brand by unduly exploiting its prestige. The difference from unfair advantage of distinctiveness is that this kind of misappropriation is more concerned with the quality image of the mark and less with its attractive force. Such a risk will be particularly high where the earlier mark has acquired not only a high degree of recognition amongst consumers, but also a good or special reputation, in the sense that it reflects an image of excellence, reliability or quality, or some other positive message, which could positively influence the choice of the consumer as regards goods of other producers. Such an added value to the mark s reputation has to be abundantly clear from the evidence on file and should not be merely assumed. 105/1999 HOLLYWOOD/HOLLYWOOD (FR), 81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC (EN) R 283/ HOLLYWOOD/HOLLYWOOD (FR) Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 380

381 Trade marks with reputation The applicant may benefit from the quality aspects of the opponent s reputation without actually harming the image of the earlier mark. Thus, contrary to what applies to dilution by tarnishing, the applicant s goods do not need be of poor quality, or of an offensive character. For example, if the earlier mark is a synonym of excellence, even the use of the application in respect of ordinary quality products could take unfair advantage of its repute, provided of course that the relationship between the goods is such that allows for an association to be made between the two signs. Finally, the statements made in the previous section in the context of unfair advantage of distinctiveness as regards the enhanced likelihood of advantage in cases of (a) an exceptional distinctiveness of the earlier sign, (b) neighbouring markets, (c) exploitation through merchandising, and (d) intentional imitation, are also pertinent here, as the mechanism for gaining advantage is basically the same in both situations Proof of detriment unfair advantage Standard of proof In opposition proceedings detriment or unfair advantage may be only potential, as confirmed by the conditional wording of Article 8 (5), which requires that the use of the application without due cause would take unfair advantage of, or be detrimental to the distinctiveness or repute of the earlier mark. In contrast, Article 9 (1) (c) CTMR, which uses the more positive wording takes unfair advantage of or is detrimental to, does not appear to be satisfied with a potential risk of fulfilment of the conditions envisaged. The same discrepancy between provisions dealing with registration and provisions regulating use can also be seen in Articles 4(3) and 5(2) of the TM Directive. R 283/ HOLLYWOOD/HOLLYWOOD (FR) The above difference is only natural and can be easily explained from the fact that, in opposition proceedings, actual detriment or unfair advantage will occur only exceptionally, given that in most cases the applicant will not have put his mark to effective use when the dispute arises. Nevertheless, such a possibility should not be ruled out completely, and if there is evidence of actual use or damage, it will have to be considered and given appropriate weight. 621/2001 F1 FORMULA 1/F1 FORMULA 1 (EN) On the other hand, the fact that detriment or unfair advantage may be only potential does not mean that a mere possibility is sufficient for the purposes of Article 8 (5). Detriment or unfair advantage must be probable, in the sense that it is foreseeable in the ordinary course of events. Thus, it is not enough to merely show that detriment or unfair advantage cannot be excluded in general, or that it is only remotely possible. Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 381

382 Trade marks with reputation 105/1999 HOLLYWOOD/HOLLYWOOD (FR), 1358/1999 BLANCO Y NEGRO/BLANCO Y NEGRO (ES) 2/2000 PLANETA/PLANETA X (ES) Burden of proof As also mentioned in section III above, Article 74(1) CTMR requires the opponent to put forward and prove all the facts on which his opposition is based. Thus, the opponent bears the burden to show, within the period he has for completing the substantiation of his opposition, that the actual or future use of the application has caused, or is likely to cause, detriment to the distinctiveness or the repute of the earlier mark, or that it has taken, or is likely to take, unfair advantage thereof. R 283/ HOLLYWOOD/HOLLYWOOD (FR) In doing so, the opponent cannot merely contend that detriment or unfair advantage would be a necessary consequence flowing automatically from the use of the sign applied for, in view of the strong reputation of his mark. Even where the earlier mark is highly reputed, the taking of unfair advantage or the suffering of detriment must be properly substantiated since otherwise, marks with reputation would enjoy blanket protection against identical or similar signs in relation to virtually any kind of product. However, this would be clearly inconsistent with the wording and spirit of Article 8(5), as in such a case reputation would become the sole requirement for its application, rather than being only one of the several conditions provided for therein. R 802/ DUPLO/DUPLO, 1082/2001 KINDER/KINDER EM-EUKAL (EN) Thus, where the opponent claims actual detriment or unfair advantage, he must give indications and evidence of the kind of detriment suffered, or of the unfair advantage taken by the applicant, as well as to show that it resulted from the use of the sign applied for. To this effect, the opponent may rely on a variety of indications, depending on the kind of detriment or unfair advantage argued, such as a considerable decrease in sales of the goods bearing the mark, or a loss of clientele, or a decline of the degree of recognition of his mark among the public. On the other hand, in the case of potential detriment or unfair advantage the exercise will necessarily be of a somewhat speculative nature, as the detrimental or beneficial impact has to be evaluated ex ante. Thus, the opponent should at least put forward a coherent line of argument, showing what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events. R 802/ DUPLO/DUPLO, 105/1999 HOLLYWOOD/HOLLYWOOD (FR), 1358/1999 BLANCO Y NEGRO/BLANCO Y NEGRO (ES) It follows that, as a rule, general allegations of detriment or unfair advantage will not be sufficient in themselves for proving potential detriment or unfair Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 382

383 Trade marks with reputation advantage. However, considering that in such cases the subject-matter of proof is the likelihood of a future event, and that, by definition, the opponent s arguments cannot in themselves amount to evidence, it will often be necessary to base certain conclusions on legal presumptions, that is on logical assumptions or deductions resulting from the application of the rules of probability to the facts of the specific case. One such presumption has been mentioned by the Court, when it stated that the stronger the earlier mark s distinctive character and reputation, the easier it will be to accept that detriment has been caused to it (General Motors, paragraph 30). It should also be noted that the kind of presumptions relevant here are rebuttable presumptions (praesumptio juris) the existence of which the applicant may always disprove by submitting appropriate evidence, and not conclusive presumptions (praesumptio juris et de jure). R 1007/ LIPOSTATIN/LIPOSTAT (EN), 227/1999 ABC/ABC (FR), 437/1999 VITAKRAFT/VITAGRAFT (EN), 2/2000 PLANETA/PLANETA X (ES), R 472/ BIBA/BIBA (FR) In addition, if the type of detriment or unfair advantage argued in the specific case is of such a nature that presupposes the fulfilment of certain particular conditions of fact (e.g. exclusive character of the earlier mark, qualitative aspects of reputation, a given image etc.), these facts will also have to be proved by the opponent, by the submission of appropriate evidence. 105/1999 HOLLYWOOD/HOLLYWOOD (FR) Means of evidence Where the opponent claims actual detriment or unfair advantage, he can use all the means of evidence provided for in Article 76 CTMR for proving it. For example, he may prove an actual decrease of trade mark awareness by reference to opinion polls and other documentary evidence, or a fall in sales by submitting concrete economic results or extracts from his official commercial books. The rules governing the evaluation and the probative value of such evidence are the same as the ones mentioned in sections III and 4.4 above, in relation to the evidence required for proving reputation. Even where the detriment or unfair advantage claimed is only potential, the opponent will have to prove any conditions of fact which might be necessary in particular cases for giving rise to a probability of detriment or unfair advantage, by submitting evidence of the kind mentioned above. R 283/ HOLLYWOOD/HOLLYWOOD (FR), R 802/ DUPLO/DUPLO, R 1007/ LIPOSTATIN/LIPOSTAT (EN) 4. Use without due cause The last condition for the application of Article 8(5) is that use of the sign applied for should be without due cause. Even though this is a necessary Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 383

384 Trade marks with reputation condition of protection, the opponent cannot be reasonably expected to prove a negative fact, such as the absence of due cause. It follows that as regards this requirement the burden of proof is reversed. Hence, in the absence of any indications on the face of the evidence providing an apparent justification for the applicant s acts, the lack of due cause must be generally presumed. However, the applicant may avail himself of the possibility of rebutting such a presumption by showing that he has a legitimate justification that entitles him to act in this particular manner. R 283/ HOLLYWOOD/HOLLYWOOD (FR), R 303/ MAGEFESA/MAGEFESA (ES), 81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC (EN) For example, such a situation could be envisaged if the applicant had been using the sign for dissimilar goods in the relevant territory before the opponent s mark was applied for, or acquired a reputation, especially where such a coexistence has not in any way affected the distinctiveness and repute of the earlier mark. Another instance of legitimate excuse could be where the logo of which the opponent s mark consists was created by the applicant, who only gave the opponent non-exclusive rights to register and use it for a specific set of goods, but reserved the right to register and use it himself for the goods applied for. 621/2001 F1 FORMULA 1/F1 FORMULA 1 (EN) However, the mere fact that the applicant is a holder of a national registration for the mark applied for cannot as such provide him with a valid excuse, where (a) the two marks are not identical, or (b) his registration is not earlier than the opponent s and (c) he has not also put the mark to effective use in the territory concerned. 102/1999 NIKE /NIKE (ES), 105/1999 HOLLYWOOD/HOLLYWOOD (FR), R 283/ HOLLYWOOD/HOLLYWOOD (FR) Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 384

385 OPPOSITION GUIDELINES Part 6 Proof of Use Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 385

386 INDEX PART 6: REQUIREMENT OF USE IN OPPOSITION PROCEEDINGS I. GENERAL CONSIDERATIONS Function of proof of use Legislative framework CTMR and CTMIR Article 15 CTMR Article 43 CTMR Rule 22 CTMIR Trade Marks Directive and national law implementing the Directive Substance and procedure II. SUBSTANTIVE LAW The principle of genuine use Nature of use use as a mark Use as a mark Use as a trade name/trade designation/name Use as a title of a publication Use as a domain name Use in the course of trade Meaning of course of trade Public use Private use Intra-enterprise use Preparation of use Use in relation to goods or services: labels, on price lists, invoices, catalogues and other business papers Use in advertising Advertising in parallel to the marketing of goods or services Advertising in advance of the marketing of goods or services Advertising without any marketing of goods or services Use on the Internet Volume (extent, amount) of use Criteria Examples of insufficient use Examples of sufficient use Place of use Use on the domestic market CTMs: Use in the European Community National marks: Use in the relevant Member State Use in import and export trade Use of the mark as registered use of variations of the mark as registered Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 386

387 6.1. Principle: Relevance of the Register Use of the mark as registered Use as registered word marks Use as registered figurative marks Use as registered 3D marks Use as registered colour marks Use of more than one mark Acceptable and unacceptable variations Standards for determining the admissibility of a variant Variations of letters and words Variations of figurative marks and elements Variations of colours Use for the goods or services for which the mark is registered Comparison of use with specification Relevance of the classification Use and registration for class headings Generic/general terms in classification Use by the proprietor or on his behalf Use by proprietor Use by authorised third parties Use of collective marks Time of use Use within five years preceeding the date of publication Grace period of five years Initial grace period Grace period after interruption of use End of grace period Remaining goodwill Legal use Deceptive use Other forms of illegal use Justification of non-use Business risks Government intervention Force majeure Consequences of justification of non-use III. PROCEDURE Request by the applicant Time of request Nature of request explicit, unambiguous, unconditional Express invitation by the Office Reaction of the opponent providing proof of use Time limit for providing proof of use Means of evidence Principle References Declarations Subject-matter of proof of use Place of use Time of use Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 387

388 Nature of use Extent of use Reaction of the applicant Forwarding of the evidence Insufficient proof of use No reaction of applicant Formal withdrawal of request Relationship of request for proof of use and reply to opposition Further reaction by the opponent Languages in proof of use proceedings Decision: Assessment of the evidence standard of proof Competence of the Office The standard of proof Indirect or circumstantial evidence Overall assessment Need for decision Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 388

389 Proof of use Part 6: Requirement of use in opposition proceedings I. General considerations 1. Function of proof of use Community legislation on trade marks establishes an obligation for the owner of a registered trade mark to use that mark in a genuine manner. The reason for this obligation of use is that it is only the position on the market actually held by the trade mark proprietor that should be protected, and not a mere register right that is not supported by any actual or potential goodwill. Furthermore, requiring use of a mark as a condition for enforcing rights will reduce the number of conflicts between marks and eventually also reduce the number of marks maintained on the register without actually having been used. The Boards of Appeal have affirmed that the rationale underlying Article 43(2) and (3) CTMR is that the trade mark register should not be blocked by trade marks that are not being used. It would be unjust and inappropriate if persons who wish to register Community trade marks were prevented from doing so on account of earlier registered marks that are not in fact being used. R 743/ MERTINA / MERITENE (ENG), R 756/ DOCTORS / DOC& TORS, R 733/ AFFINITE / AFFINAGE (EN), R 380/ LINDEBOOM / LINDENER (IT, FR, EN, ES, DE), R 362/ HERVALIA / HERBAPURA (IT, FR, EN, ES, DE), R 373/ GIORGIO / GIORGI (EN), R 378/ RINASCIMENTO / RENACIMIENTO (EN), R 149/ MARKO / MAKRO (EN) The obligation of use is not applicable immediately after registration of the mark. Instead, the owner of a registered mark has a so-called grace period of five years to put the relevant goods and services under this mark on the market. Before this period elapses, the mere formal registration gives the mark its full protection. The Office does not inquire ex officio whether the earlier mark has been used or not. Such examination takes place only when the CTM applicant makes a request for proof of use. The request of the applicant, under the condition that the legal requirements are met, triggers the procedural and substantive consequences laid down in the CTMR and the CTMIR. 2. Legislative framework The legislative framework consists of provisions in the CTMR, in the CTMIR, and in the Trade Marks Directive as implemented in the national law of the Member States. Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 389

390 Proof of use 2.1. CTMR and CTMIR Article 15 CTMR Article 15 CTMR stipulates the basic substantive requirement for the obligation to use registered marks. Article 15(1) CTMR reads: If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for nonuse. Article 15(2), (3) CTMR stipulates forms of use which also constitute use of the Community trade mark in accordance with Article 15(1) CTMR. According to Article 15(2)(a) and (b) CTMR, the use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered and the affixing of the Community trade mark to goods or to the packaging thereof in the Community solely for export purposes, also constitute use within the meaning of Article 15(1) CTMR. According to Article 15(3), the use of the Community trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor Article 43 CTMR The various possible consequences of a lack of use are dealt with in the specific provisions of the different proceedings. Article 43(2) and (3) CTMR contain the respective provisions for opposition proceedings. According to Article 43(2) CTMR, If the applicant so requests, the proprietor of an earlier Community trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the Community trade mark application, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier Community trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected. If the earlier Community trade mark has been used in relation to part only of the goods or Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 390

391 Proof of use services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services. According to Article 43(3) CTMR, Paragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Community. There is no express provision in the CTMR that such forms of use as mentioned in Article 15(2) and (3) CTMR may also be regarded as use of earlier national trade marks. However, the concept of the obligation to use the registered mark is harmonised as a consequence of Article 10(2) and (3) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (the Directive ). Hence, it is appropriate to apply Article 15(2) and (3) CTMR to the use of earlier national trade marks Rule 22 CTMIR Rule 22 CTMIR lays down the procedural rules to follow and deals with evidence to be submitted and the applicable language regime. According to Rule 22(1) CTMIR, where, pursuant to Article 43(2) or (3) CTMR, the opponent has to furnish proof of use or show that there are proper reasons for non-use, the Office shall invite him to provide the proof required within such period as it shall specify. If the opponent does not provide such proof before the time limit expires, the Office shall reject the opposition. According to Rule 22(2) CTMIR, the indications and evidence required in order to furnish proof of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based, and evidence in support of these indications in accordance with paragraph 3. According to Rule 22(3) CTMIR, the evidence shall, in principle, be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 76(1)(f) CTMR. According to Rule 22(4) CTMIR, where the evidence supplied pursuant to paragraphs 1, 2 and 3 is not in the language of the opposition proceedings, the Office may require the opponent to submit a translation of that evidence in that language, within a period specified by the Office. Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 391

392 Proof of use 2.2. Trade Marks Directive and national law implementing the Directive Article 10 of the Dir. contains provisions identical to Article 15 CTMR, with use in the Community being replaced by use in the Member State. Article 11 and 12 of the Dir. deal with procedure in national law. They are of no relevance in the present context. 3. Substance and procedure It is appropriate to distinguish between substantive provisions and procedural provisions. These Guidelines treat first the substantive rules; and then the procedural rules (in part, Article 43; also Rule 22). (Article 15 and in Article 43 (2) and (3) CTMR.) Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 392

393 Proof of use II. Substantive law 1. The principle of genuine use Neither the CTMR nor the CTMIR defines what is to be regarded as genuine use. Genuine use means use in trade. In general, this implies actual sales and there must have been some sales of the goods or providing of the services during the relevant period of time. Furthermore, use in advertising may amount to genuine use depending on the specific circumstances (see below point II.3.4.) However, mere preparatory steps are not to be regarded as genuine use of a mark. As regards the necessary volume of sales and services for passing the threshold of genuine use, it is impossible to establish general figures which classify use as genuine. Each case has to be seen in the light of its own merits. The answer to this question varies depending on other criteria, such as the specific business area and the goods and services involved. The necessary volume of sales and services is in general set at a higher level for mass products than for special products that meet a rather small demand. 326/1999 Carrera y Carrera / CARRERAS (EN), 1480/1999 DESATURA / RENATURA (EN) The Court of Justice confirmed this view in its judgement ANSUL where the Court held that consideration should be given to the nature of the goods or services at issue, the characteristics of the market concerned and the scale and frequency of use of the mark (Judgment of 11 March 2003 in case C- 40/01 Ansul BV vs. Ajax Brandbeveiliging BV, par. 39). Thus, it has to be evaluated whether, in view of the market situation in the particular industry or trade concerned, it can be deduced from the submitted material that the owner has seriously tried to acquire a commercial position in the relevant market. The wording used by European Court of Justice (judgment ANSUL, par. 38) reads as follows: Finally, when assessing whether there has been genuine use of the trade mark, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, in particular whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark. Fictitious acts of use for the sole purpose of safeguarding the monopoly granted by the registration are insufficient. The Boards of Appeal have Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 393

394 Proof of use repeatedly stated that genuine use must be contrasted with token use. It implies real use for the purpose of trading in the goods or services in question so as to generate goodwill as opposed to artificial use designed solely to maintain the trade mark on the register. R 362/ HERVALIA / HERBAPURA (EN), R 380/ LINDEBOOM / LINDENER (EN), R 474/ CARRERAS / CARRERA Y CARRERA (EN), R 733/ AFFINAGE / AFFINITE (EN), R 821/ RENOLIN / RENTOLIN (EN) The volume of sales and services and the period of time of use of the mark in the market are in general particularly important in this context. It should be noted that these two factors are interdependent: both a short-term use of a high volume and a continuous use of a quite modest volume may suffice to fulfil the requirement of genuine use. On many occasions, the Boards of Appeal have underlined that use does not have to be continuous during the five years. It is sufficient if the use started at the very end of the period, provided that this use was genuine. R 362/ HERVALIA / HERBAPURA (EN), R 733/ AFFINAGE / AFFINITÉ (EN), R 821/ RENOLIN / RENTOLIN (EN), R 786/ PARABOOT / PARAWET (EN) Another decisive factor in the evaluation might be the way in which the mark appears on the goods themselves or other relevant material. The Board of Appeal considered the genuineness of use put into doubt in cases where the mark, due to additional, very dominant use of other marks, might be perceived as a mere decorative element. R 833/ NIKE F.I.T. / NIKE (fig) (ES), R 880/ NIKE TRIAX SERIES / NIKE (fig) (ES), R 16/ NIKE / NIKE (fig) (ES), R 19/ NIKE TOWN / NIKE (fig) (ES), R 73/ NIKE (fig) / NIKE (fig) (ES), (the cases are pending before the CFI) In order to determine whether the requirement of genuine use (and the other criteria of Articles 15 and 43) have been met, it is necessary to evaluate the separate items separately, so as to come to a final conclusion. 2. Nature of use use as a mark 2.1. Use as a mark Articles 15 and 43(2) CTMR require proof of genuine use in connection with the goods or services in respect of which the trade mark is registered and which the opponent cites as justification for his opposition. Hence, the opponent has to show that the mark has been used as a trade mark on the market. Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 394

395 Proof of use As a trade mark has, inter alia, the function to operate as a link between the goods and services and the person responsible for their marketing, the proof of use must establish a clear link between the use of the mark and the relevant goods and services. It is not necessary for the mark to be affixed on the products themselves. A representation of the mark on the packaging, catalogues, advertising material or invoices relating to the goods and services in question may be sufficient (see below point I.3.3.). 122/2001 ATLANTIC / ATLANTIC RICHFIELD (EN) 2.2. Use as a trade name The use of a sign as a business or trade name cannot be regarded as trade mark use, unless the relevant goods or services themselves are identified and offered on the market under this sign. In general, this is not the case when the business name is merely used as a shop sign (137/1999 FILELLA / fixella (DE)), or on the back of a catalogue (298/1999 APOMED / APOMEDICA (EN)) or of a label (586/1999 ARKO / AKA (EN)). The presentation of the business name at the top of order forms or invoices might present use as the registered trade mark depending on how the sign appears on them. 1063/2001 ANASTASIA / ANASTASIA (EN) Similarly, the use of a trade name (that is also registered as a trade mark) on the packaging of goods, on letterheads or in advertising in connection with goods or services may constitute use as a trade mark Use as a title of a publication A trade mark used as a title of a mail order catalogue does not constitute use within the terms of Article 43(2) CTMR for the goods which are offered for sale within that catalogue. 3086/2000 KALEIDOSCOPE / Le Kaleidophone (EN) 2.4. Use as a domain name Use of a sign as a domain name or as part of a domain name primarily identifies the owner of the site. Depending on the circumstances, such use may also be use of a service mark or trade mark. 3. Use in the course of trade The mark in order to be protected must be used in the course of trade. The meaning of in the course of trade for use purposes is not the same as the meaning of that term for infringement purposes. For example, the mere stocking of goods constitutes infringement if it is done with the view of offering Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 395

396 Proof of use for sale or bringing on the market. Such use is however not public use in the sense required in the present context Meaning of course of trade Trade marks in order to be enforceable must be used in the course of trade. Course of trade means in the context of an ongoing business. Where the mark is protected for non-for-profit enterprises for their goods or services, and the mark has been used, the fact that there is no profit motive behind the use is irrelevant Public use The use must be public, i.e., it must be apparent to actual or potential customers of the goods or services Private use Use in the private sphere is not use in the course of trade Intra-enterprise use Use of a mark purely internally within a company or a group of companies does not suffice because the use is not apparent to actual or potential customers Preparation of use Preparation of use such as the printing of labels, producing of containers, etc. - is internal use and thus not use in the course of trade for present purposes Use in relation to goods or services: labels, on price lists, invoices, catalogues and other business papers Trade marks have traditionally been used on goods (printed on the goods, on labels, etc.) or their packaging. However, the use on goods or their packaging is not essential. It is sufficient if there is a proper connection between the marks and the goods. As regards services, marks cannot be directly used on services. Therefore, as regards service marks, their use will generally be on business papers, in advertising, or in any other direct or indirect relation to the services. Thus, trade marks and service marks are often used not only or not at all on the goods themselves, but on items related to them, such as price lists, invoices or similar business papers. Where the use on such items demonstrates genuine use, such use will be sufficient. It is generally Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 396

397 Proof of use considered sufficient if the mark is used in relation to the goods or services, such as on brochures, flyers, stickers, signs in the interior of places of sale, etc. While such use may generally be sufficient, this does not mean that such use will always be found to satisfy the requirement of genuine use (see below point III.7. as regards the evaluation of evidence). When goods are sold only by catalogues (mail-order sales) or through the Internet the mark may not always also be on the goods themselves as they are shipped to the customer. Such use provided it is otherwise genuine will generally be considered sufficient. In such a situation the owner of the mark will not have to provide proof that the mark actually appeared on the goods themselves. Mere use of the mark on promotional material for other goods cannot be considered as sufficient (indirect) evidence of use for the items used. For example, giving away articles of clothing such as T-shirts and baseball caps at promotional events with the purpose of marketing a certain product, such as a drink, cannot be considered as genuine use of a mark for clothing. 374/2001 MALIBU (fig) / fig (EN) 3.4. Use in advertising Trade marks fulfil their function as indicating commercial origin of goods or services and symbols of the goodwill of their owner not only when they are actually used on or in relation to goods or services, but also when they are used in advertising. In fact, the advertising function of trade marks is one of their most important functions. Therefore, use in advertising will generally be considered as amounting to genuine use if the volume of advertising is sufficient to constitute genuine public use of the mark and if a relation can be established between the mark and the respective goods or services for which the mark is registered. The ECJ confirmed this approach in its judgement ANSUL where it held that use of the mark must relate to goods or services already marketed or about to be marketed and for which preparation by the undertaking to secure customers are under way, particularly in the form of advertising campaigns (Judgment of 11 March 2003 in case C-40/01 Ansul BV vs. Ajax Brandbeveiliging BV, par. 37). However, the outcome in a particular case will depend very much on the individual circumstances. Examples: 209/2001 CRITTELS / SEA CRITTELS (FR): the opponent submitted some brochures, letters concerning the launching of the products perfumery and Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 397

398 Proof of use cosmetics-, excerpts from the Internet web site and advertising. The Opposition Division considered the evidence submitted as insufficient since it did not give any indication of the extent of use of the trade mark. 1445/2001 BLUME-LEOPOLDO BLUME / BLUMEN WORLDWIDE (EN): the opponent submitted evidence consisting of catalogues of books and publications, a receipt of opening of a bank account, an order bill, press notes, copies of advertisements. The Opposition Division considered it as insufficient to prove genuine use, since none of the submitted material proves the extent of use Advertising in parallel to the marketing of goods or services Where advertising is carried out in parallel to the marketing of goods and services and there is proof of both the marketing and the advertising, the advertising will support the genuineness of the use Advertising in advance of the marketing of goods or services Advertising in advance of the actual marketing of goods and services if genuine and with a view of establishing a market for the goods or services will generally be considered to constitute genuine use Advertising without any marketing of goods or services Whether mere advertising without any current or future plans to actually market goods or services will constitute genuine use appears doubtful. As in most other situations, the outcome will depend on the circumstances of each case. For example, where the goods or services are available abroad, such as vacation places or particular products, advertising alone may be sufficient to amount to genuine use Use on the Internet The mere presence of the mark on a website shows nothing more than that the website is accessible. This is in itself not sufficient to prove genuine use. 2621/2001 ADVANCE /ADVANCE (EN); 209/2001 CRITTELS / SEA CRITTELS (FR) This may be different in cases where concrete evidence is submitted that the specific web-site has been visited and, in particular, orders for the relevant goods and services have been effected by a certain number of customers in the relevant period. 1513/1999 BEROL / TEROL (EN) The evidence submitted must show that the on-line transactions were connected with the goods or services designated by the mark. Whereas the nature of the mark and, to a certain extent, the time and place are the less Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 398

399 Proof of use complex elements to prove, the extent of the use presents more difficulties. It should be taken into account that transactions on the Internet tend to eliminate most of the traditional evidence of sales such as invoices, turnover, taxation documents etc. New electronic evidence tends to substitute, or has already substituted, them as certified means of payment, requests and their confirmations, registrations of safe transactions etc. 4. Volume (extent, amount) of use 4.1. Criteria The opponent has to prove the extent of use. This does not mean that the opponent has to reveal the respective volume of sales or turnover figures. It is sufficient to submit evidence, which proves that the minimum threshold for a finding of genuine use has been passed. This evidence may therefore be not only given in form of the volume of sales and the annual turnover figures, but also by other means of evidence such as orders, invoices, price lists, promotional material. The probative value of such evidence depends on its specific form and content. The exact decisive threshold proving genuine use cannot be defined out of context. It depends on the circumstances of the case, the evaluation of the submitted evidence in its entirety, the nature and characteristics of the goods or services, the particular area of business etc. R 689/2000 PUMBY / PUMMY (EN) It cannot be concluded that use is not genuine just because only one invoice has been submitted (824/2000 KOVO / Koyo (ES) - one invoice for DEM ) or because all or a majority of invoices are in the name of one customer or because those invoices cover a quantity which appears small in relation to the total declared turnover of products bearing the earlier mark (R 821/ RENTOLIN / RENOLIN (EN)) Examples of insufficient use 310/1999 GOLDNETT / GOLD (EN): the opponent submitted evidence consisting of tax documents showing the owner s income (without any indication that they concern the products bearing the mark in question), labels and one debit note for fertilisers. The Opposition Division considered the evidence insufficient to prove genuine use. 391/1999 HOREGON / OREGON (EN): the Opposition Division found an invoice for 180 pairs of shoes as insufficient to prove genuine use. 457/1999 FLORIA / Floriall-in (EN): evidence consisting of an invoice showing sales of 100 roses and promotional material with no reference as to place, extent or time was considered insufficient to prove genuine use. Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 399

400 Proof of use 491/1999 FESTIVAL BY GLÄSER / FESTIVAL (EN): the Opposition Division found invoices showing sales for 50 pieces of clothing insufficient to prove genuine use. 587/2000 SYNDIKATE / BOARDER s SYNDICATE (EN): to prove genuine use of his trade mark in France and Portugal in connection with clothing the opponent filed several invoices, many of them referring to a period other than the relevant one. The Opposition Division considered the evidence as sufficient to prove use of the mark in Portugal, but not in France (invoices for only 600 polo shirts). 208/2001 LYS MINNESOTA / LYNX (fig) (EN): as evidence of use the opponent filed 2 invoices for a total amount of 122 items of clothing and 4 undated labels with no indication of what goods they were to be affixed to. The Opposition Division considered them insufficient to prove genuine use. R 474/ Carrera y Carrera / CARRERAS (EN): the Board of Appeal confirmed the view of the Opposition Division considering one invoice for a delivery of cigarettes for a total amount of ESP insufficient to prove genuine use. R 378/ RENACIMIENTO (FIG) / RINASCIMENTO (EN): The Board of Appeal confirmed the decision of the Opposition Division that the submission of one bill of lading showing the delivery of 40 packages of sherry is insufficient to prove genuine use. R 578/2000 HIPOVITON / HIPPOVIT (DE): the Board of Appeal confirmed this finding of the Opposition Division considering evidence of 450 packages of animal food as insufficient to prove genuine use. The case is pending before the CFI. R 689/2000 PUMBY / PUMMY (EN): The Board of Appeal held that the quantity of products (toy animals) sold within the relevant period (5 694 units in 1993, units in 1994 and units in 1995 i.e. an average of 12 units per day) is insufficient, given the nature of the products, the number of retail outlets in the relevant territory and the overall size of the German market Examples of sufficient use 129/2001 TREFF / TOP-TREFF (DE): the Opposition Division regarded evidence of sales for around furry toy animals in the high-priced market sector as sufficient to prove genuine use. 1086/2001 PREMIERE(fig) / PREMIER (fig) (FR): to prove use of his trade mark in France for magazines and periodicals, the opponent submitted: copy of financial document concerning the sales of the magazine titled PREMIERE in Europe and copies of the magazine issues for each year of the relevant period. The Opposition Division found that the opponent had Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 400

401 Proof of use sufficiently proved the genuine use having regard to the magazine issues, although the financial document had not been taken into account since it did not bear any specific indication of the diffusion of the magazine in France. 1390/2001 FOCUS / FOCUS DYMAMICS (FR): the opponent submitted one invoice referring to the sale of one high-precision laser cutting machine for FRF , a catalogue describing its performance and some photographs depicting the product. The Opposition Division considered them as sufficient evidence taking into account the nature of the product, the specific market and its considerably high price. 5. Place of use 5.1. Use on the domestic market Trade marks must be used in the territory where they are protected (European Community for CTMs, the territory of the Member States in case of national marks). This does not mean that they must be used everywhere in the respective territory. Rather, partial use, provided it is genuine, is sufficient. In view of the globalisation of trade, the seat of the owner of the mark may not be regarded as sufficient indication that the use has taken place in that particular country. Even though Article 15(2)(b) CTMR stipulates that the affixing of the trade mark to goods or to the packaging thereof in the Community solely for export purposes is considered as use of the mark, the mere indication of the opponent s seat as such does not constitute evidence of such acts. 600/2000 Topolino / POCOLINO (DE), 827/2000 Marco / MARCA (EN) 5.2. CTMs: Use in the European Community If the earlier mark is a Community mark, it must be used in the Community (Article 15(1) and Article 43(2) CTMR). It is not necessary that the mark must be used everywhere in the Community. Genuineness of use may be found also when the mark has been used in only one part of the Community, such as in a single Member State or in a part thereof. Any other rule would discriminate between small and big enterprises, and thus be contrary to the aim pursued by the CTM system which should be open to businesses of all kinds and sizes. The sufficiency of use in only a part of the Community is reflected in the Joint Statements by the Council and the Commission entered in the minutes of the Council meeting at which the CTMR was adopted (Joint Statements by the Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 401

402 Proof of use Council and the Commission of , No B. 10, OJ OHIM 1996, 615). According to these statements, The Council and the Commission consider that use which is genuine within the meaning of Article 15 in one country constitutes genuine use in the Community. While these statements only have an interpretative value and are not legally binding, they will nevertheless be applied by the Trade Mark Department of the Office National marks: Use in the relevant Member State If the earlier mark is a national mark with effect in one of the Member States of the European Union, the mark must have been genuinely used in the country where it is protected (Article 43(3) CTMR). Use in a part of the Member State, provided it is genuine, will be considered as sufficient Use in import and export trade The mark has to be used in the relevant geographical area where it is registered. Evidence that only relates to the importation of the goods in the relevant area may, depending on the circumstances of the case, suffice as proof of use in this area. 802/1999 MILES / MORE MILES (EN) According to Article 15(2)(b) CTMR, the affixing of the Community trade mark to goods or to the packaging thereof in the Community solely for export purposes also constitutes use within the meaning of Articles 15(1) CTMR. 6. Use of the mark as registered use of variations of the mark as registered 6.1. Principle: Relevance of the Register Pursuant to Articles 15 and 43 CTMR, the mark must be used as registered. Therefore, the register (Community or national) is the starting point of the analysis Use of the mark as registered Use as registered word marks Word marks are marks consisting of letters, numbers and other signs reproduced in the standard typeface used by the respective office. This means that as regards these marks no particular figurative element or appearance is claimed. Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 402

403 Proof of use Word marks are also such marks which, although they are registered as figurative marks nevertheless are reproduced in a standard typeface, which is however different from the one used by the respective office. It is the common characteristic of all word marks that they are considered to be used as registered, and not as a variation, if they appear on the market in a typeface or size which is not that appearing in the register but considered as commonly used in the respective market Use of word marks in different type face Word marks are considered used as registered if the typeface is different. It would not be correct to analyse this type of use under the aspect of whether the distinctive character is altered. This may be different however if the typeface is a particular one, such as particular script typefaces, so that the overall appearance of the word mark is changed to that of a figurative mark Use of word marks in different size letters (capitals and small letters) Changing the letter size or changing between small and capital letters is customary when using word marks. Therefore, such use is considered use of the registered mark. However, where the mark is registered with an unusual spelling such as capital letters in the middle, unusual initial small letter, etc. and the used form does not have the same appearance (or vice versa), such use will be analysed under the variation rule (Article 15(2)(a) CTMR) Use of word marks in colour Word marks are registered in black and white. It is customary to use marks in colour. Such use does not constitute a variant but use of the registered mark. The Board of Appeal did not find the distinctive character of the word mark BIOTEX altered, in spite of various stylistic changes, such as shadows giving the impression of being three-dimensional and a different colour tip of the letter I. The Board considers these variations minimal and routine. R 812/ BIOTEK / BIOTEX (EN) (reversing OD decision 1518/2000) Use of word marks with generic or descriptive additions Where a registered word mark (or any other mark) is used together with a generic indication of the product or descriptive term that is not integrated into the mark, this will be considered as use of the registered mark. Additions which are just indications of characteristics of the goods and services, such as Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 403

404 Proof of use their kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the services, do in general not constitute use of a variant. These cases have in previous practice been analysed under the variation rule, with the variation usually considered to be immaterial. According to this principle, the following additional elements were not considered as altering the distinctive character of a mark: Addition/deletion basics Case for shoes 802/1999 MILES / MORE MILES (EN) Figures (describing the amount of the active ingredient) in QUANTOR 150, QUANTOR 300, QUANTOR 150, QUANTOR 300 bière sans alcool bière de haute qualité pur malt King Size or KS for pharmaceuticals 892/1999 QUANTOR / KONTOR 7 (fig) (EN) for beer 242/2000 SILVER / SILVER COLA (EN) for cigarettes 256/2000 GOLD MARK / GOLD BLOCK (EN) Omission of the term PORTUGAL in the mark 339/2000 BIODERMA Portugal / Biodermal (EN) (confirmed by the Board of Appeal in R 282/2000-4) cosmétique, cosmétique juvénile, cosmétique éternelle, cosmétique biologique CABERNET, PINOT GRIGIO TRENTINO, VALDADIGE SCHIAVA ROSATA, etc. for beauty products 2451/2000 BIODERMA Portugal / BIODERMA (EN) for wines 3477/2002 IL PORTALE / PORTALE (EN) The Board of Appeal came to the same result in R 608/ PALAZZO / HELADERIA PALAZZO (EN) (addition of the word ITALIANAS ), however by indicating that the registered mark is only not to be regarded as used in case Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 404

405 Proof of use of a substantial alteration. On the other hand, in case R-386/ OMEGA / TERTA OMEGA ANTIOXYDANTS (EN), the Board of Appeal concluded that use of the sign OMEGA cannot be deemed to be use of the registered mark OMEGA-FARMACEUTICA, stating that it is not possible to remove one of the two words from a combination of two joined nouns of the same visual importance without, as a consequence, changing the appearance of the whole Figurative marks Using a figurative mark registered in black and white in colour constitutes use of the registered mark, unless it changes the overall impression of the mark (as to figurative marks with colour elements see below point II.6.4.4). Similarly, adding word elements to a figurative mark will generally not result in a variant of the figurative mark, if such word elements are descriptive or generic indications or another (word) marks D marks 3D marks are of different types. Some 3D marks are objects used as marks (such as figurines on the outside of cars). They are often used in varying sizes, and such variations usually amount to use of the registered mark. Some 3D marks consist exclusively of the shape of goods or their packaging, such as bottles or other containers. In the course of trade it is customary that such shapes are also marked with word marks or descriptive indications, or that bottles or containers also carry labels. The question whether such use constitutes use of the 3D mark for the purposes of maintaining trade mark rights has not yet arisen before the OD but if it arose the mark should generally be considered to have been used as registered Colour marks Colour marks must be distinguished from figurative marks composed of one or more colours. Colour marks are marks consisting of one or more colours as such. Where the mark is a colour combination, the registration may or may not indicate a particular distribution or proportion of the various colours. In the course of trade it is customary that colours or colour combinations are used on the product packaging but in combination with a distinctive word mark and descriptive indications. The question whether such use constitutes use of the colour mark for the purposes of maintaining trade mark rights has not yet arisen before the OD but if it arose the mark should generally be considered to have been used as registered, provided the colour or colours remain prominently visible. Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 405

406 Proof of use 6.3. Use of more than one mark In each case it has to be carefully evaluated whether the added or omitted elements represent a change to the mark or depict another mark. It is quite common in some market areas that the goods and services bear not only their individual mark, but also the mark of the business or product group (house mark). In these cases the registered mark is not used in a different form, but the two independent marks are validly used at the same time. 802/1999 Miles / More Miles (EN) (the added element was the denomination of the specific shoe model Basics ), 1378/2000 TERRY / MERRY (EN). The Board of Appeal regarded the presentation of the two words MINUTO and DUBOIS as the use of two separate marks, since the evidence submitted by the opponent showed that DUBOIS is an old brand of the opponent with its own identity, and that this mark is present on the market with a number of accompanying signs, as it is common practice in the labelling of the specific products (wine). R 206/ MINU / MINUTO (EN) The addition of another word does not alter the distinctive character of a mark when the added word will be perceived as another registered mark because of the double use of the symbol. REGISTERED FORM CURRENT USE Decision No CLASSIC NESCAFÉ CLASSIC 1317/2001 (EN) This situation is to be distinguished from cases where the symbol is only depicted once after the various word elements. In such cases, this indication could be perceived as referring to the combination as a whole. 1391/2001 BIO / Io Bio (EN) There is no use of two-or-more marks, but use of one composite mark where the different elements appear as a unitary whole. This is the case where they are actually merged together. However, as always, each case has to be assessed on its own merits. The customs in the specific market sector might play a decisive role in the evaluation. 3477/2002 IL PORTALE / PORTALE (EN), 3484/2002 CARGOBULL / CARGOMAX (EN) In the cases 616/2001 BIO / bio garantie (fig) (FR) and 1391/2001 BIO / Io Bio (EN), the Opposition Division held that each of the following signs Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 406

407 Proof of use (616/2001) (1391/2001) form up one composite mark whose added elements affect the distinctive character of the registered mark (the word BIO ). However, by reversing the decision 616/2001 of the Opposition Division, the Board of Appeal held in decision R 389/ that in that case the word BIO identifies the specific good whereas the word DANONE identifies the producing enterprise. In view of the merely descriptive character of the further element con bifidus activo, the Board considered the use of the registered word mark BIO for the respective goods as proved Acceptable and unacceptable variations Standards for determining the admissibility of a variant According to Article 15(2)(a) CTMR, the use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, shall also constitute use of the registered trade mark. This means that differences between the form in which the mark is used on the market and the registered form are acceptable as long as the distinctive character of the mark is not altered. It is important to note that in cases where Article 15(2)(a) CTMR applies, the later comparison of signs (under Article 8(1)(b) or 8(5) CTMR) has to be made between the CTM application and the earlier mark in its registered form. An absolute obligation of use of the mark in the form in which it was registered would ignore the reality of the market, in particular the constant evolution in the marketing of products and the needs of trade mark owners to adapt the use of their mark in the new contexts. On the other hand, the modifications in the use must not alter the distinctive character of the mark. There are two questions to be answered. Firstly, it must be clarified what is to be regarded as the distinctive character of the mark as registered. Secondly, it must be evaluated whether the mark as used alters this distinctive character. There is interdependence between the strength of the distinctive character of a mark and the effect of alterations. Marks of strong distinctive character may be less influenced by changes than marks of limited distinctiveness. On the other hand, additional or omitted elements in the mark are more likely to affect the distinctive character of marks of limited distinctiveness. 1391/2001 BIO / Io Bio (EN) Where a mark is composed of several elements only one or some of which are distinctive and have rendered the mark as a whole registrable, an Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 407

408 Proof of use alteration of that element or its omission or exchange by another element will generally mean that the distinctive character is altered. In order to determine whether the use of a variation of the mark should be accepted or whether the distinctive character is altered the practices in the respective branch of business or trade must be taken into account. While it may be tempting to inquire into the perceptions of the public when determining whether the distinctive character is altered, this approach neglects that the public is aware only of the mark as used, and not as registered, so that there is no proper basis of comparison. Thus, the perception of the public is not relevant in this context. One line of inquiry may be to ask whether the mark as used, in comparison to the mark opposed, confers the same or in any event no greater protection than the mark as registered. Where only the mark as used is in conflict with the opposed mark, but not the mark as registered, the use of the mark should not be considered as having the same distinctive character. As a rule of thumb, the OD has developed the following criteria for evaluating whether Article 15(2)(a) CTMR applies: Variations of letters and words In general, a difference in letters or even words constitutes an alteration of the distinctive character of the mark. The following changes have been considered as altering the distinctive character of a mark: REGISTERED FORM CURRENT USE (not accepted) Decision No THE WARRIORS WARRIORBELL 165/1999 (EN) CHIO Cihochics 271/1999 (EN) Cihorella BONOLI BONOLIVA 2996/2000 (FR) The Board of Appeal considered that the use of the words CAPTAIN BIRDS EYE did not constitute use of the earlier mark CAPTAIN (R 89/ EL CAPITAN PESCANOVA / CAPTAIN (EN)). The addition or omission of insignificant prepositions does not alter the distinctive character either: REGISTERED FORM CURRENT USE Decision No Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 408

409 Proof of use CASTILLO DE PERELADA CASTILLO PERELADA (omission of DE ) 1714/2001 (EN) Variations of figurative marks and elements When the overall appearance of a figurative mark is changed, this will generally result in a finding that the distinctive character has been affected. Examples: Registration Use Case 237/1999 (EN) (omission of the word MAXOR) 206/2000 (EN) SANSON 1976/2001 (EN) VAQUER 932/2001 (EN) Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 409

410 Proof of use As regards additions, omissions or changes of figurative elements, there is a tendency to consider that such alterations do not affect the distinctive character of marks that also contain word elements. REGISTERED FORM CURRENT USE Decision No COMPUTERVISION 609/1999 (EN) ILS 1207/1999 (EN) BIODERMA 2451/2000 (EN) 1944/2000 (EN) This is particularly unproblematic in cases where the device element is mainly descriptive of the relevant goods and services. REGISTERED FORM CURRENT USE Decision No for horse race journals 1308/2000 (EN) FILDOR for threads and textiles 682/2001 (EN) However, the change in a figurative element alters the distinctive character of a mark if this figurative element is dominant in the overall impression of the mark. As regards marks with both word and figurative elements, an obvious difference in a dominant figurative element leads to an alteration of its distinctive character, even if the word element remains unchanged. REGISTERED FORM CURRENT USE Decision No Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 410

411 Proof of use TACK 295/1999 (EN) 982/1999 (EN) 1314/1999 (EN) (confirmed by the BoA in R 150/2000-1) (the circle and stave are coloured red) CAMPELO C. MINHOTO CAMPELO 926/1999 (EN) 758/2000 (EN) POMS 776/2000 (FR) 3099/2000 (EN) 484/2001 (FR) Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 411

412 Proof of use NIKE R 833/ NIKE F.I.T. / NIKE (fig) (ES), R 880/ NIKE TRIAX SERIES / NIKE (fig) (ES), R 16/ NIKE / NIKE (fig) (ES), R 19/ NIKE TOWN / NIKE (fig) (ES), R 73/ NIKE (fig) / NIKE (fig) (ES), (the cases are pending before the CFI) The use of a merely figurative mark in an inverse sense does not alter its distinctive character. REGISTERED FORM CURRENT USE Decision No 1835/2000 (EN) Variations of colours For colour marks to be considered as used they must be used with the colours as registered. Insignificant variations in the colour shade and strength will not alter the distinctive character. When colour marks are used only in black and white, this will not constitute use of the mark. Where a colour combination is registered, use in varying proportions does not affect the distinctive character. This will be different when particular proportions where claimed and these are substantially altered in the variant as used. As regards figurative marks with colour elements the use of (different) colours is not to be regarded as an alteration of the distinctive character of the mark, unless the presentation of the colour is a dominant element in the overall impression of the mark. 242/2000 SILVER / SILVER COLA (EN), 1044/2000 CAFES EL CRIOLLO / Criollo Rico (EN) 7. Use for the goods or services for which the mark is registered According to Article 15 CTMR, the mark must be used for the goods or services for which it is registered in order to be enforceable. According to the first sentence of Article 43(2) CTMR, the earlier registered mark must have been put to genuine use in connection with the goods or services in respect of Opposition Guidelines, Part 6, Proof of use - Status: March 2004 Page 412