JUDGMENT OF THE COURT OF FIRST INSTANCE (Fifth Chamber)
29 October 2009

Likelihood of confusing similarity between word/figurative mark Agile and word mark Aygill’s

In Case T‑386/07 the European Court of First Instance (Fifth Chamber) decided on 29 October 2009 that likelihood of confusion between the aforementioned signs were visually and phonetically similar. OHIM denied incorrectly a likelihood of confusion because of  the manner in which the goods in question are marketed, the visual aspect of the marks was decisive and to find that there was only a low degree of vvisual similarity between the signs and that there is no likelihood of confusion in territories, where the word ‘agile’ has a conceptual content.

The Court held that it is not certain that the visual aspect plays a greater role, since the goods in question are marketed in such a way that, when making their purchase, the relevant public’s perception of the mark designating those goods is visual. In that regard, it should be noted that the goods in question in the case are not all of the same nature as those in question in the case-law cited by the Board of Appeals, namely Case T-57/03 SPAG v OHIM – Dann and Backer (HOOLIGAN) [2005] ECR II-287, and Case T-194/03 Ponte Finanziaria v OHIM – Marine Enterprise Projects (BAINBRIDGE) [2006] ECR II-445). Therefore the Board of Appeal was wrong to describe the visual similarity between the signs at issue as being of a low degree.

Although the signs were globally similar only to a low degree, the Board of Appeal was still wrong to exclude a likelihood of confusion on the part of the relevant public, between the two marks, because  the identity of  goods set off  a low degree of similarity between the conflicting signs.

Comparing the two signs, the Court held that according to established case-law, two trade marks are similar when, from the point of view of the relevant public, there is an at least partial correspondence between them with regard to one or more relevant aspects. With regard to the visual comparison of the signs at issue, the Court held noted that the first four letters of the mark applied for, namely ‘a’, ‘g’, ‘i’ and ‘l’ are included in that order amongst the first five letters of the earlier mark, namely ‘a’, ‘y’, ‘g’, ‘i’ and ‘l’. Furthermore the mark applied for has only five letters and that the earlier mark has only seven and that they have in common a majority of the letters of which they are constituted. It can be deduced from those elements that the consumer will perceive the signs at issue as being visually similar despite their different ending, namely the letter ‘e’ for the mark applied for and the letter ‘l’ followed by an apostrophe and the letter ‘s’ for the earlier mark. In that regard the Court recalled that according to established case-law the consumer generally pays greater attention to the beginning of a mark than to the end.

The difference owing to the fact that the letter ‘y’ is present only in the earlier mark, is not sufficiently significant to put that similarity in question. Perception of that difference by the average consumer would require a detailed comparison of the signs at issue. However, that consumer is deemed only rarely to have a chance to make a direct comparison between the different marks, and must place his trust in the imperfect picture of them that he has kept in his mind.

Furthermore, the Court held wrong to take into account the particular font used by the mark applied for in its comparison of the signs at issue. It was therefore correct to note, since the earlier mark is a word mark, its proprietor has the right to use it in different scripts, such as, for example, a form comparable to that used by the mark applied for. It was therefor incorrect to conclude that there was only a low degree of similarity instead of an average degree of visual similarity between both signs.

Regarding the phonetic comparison of the signs the Board of Appeal found that they were similar in French, but different in English applying the phonetic rules of both languages to the earlier mark. As far as  the average French-speaking consumer is likely to associate the use of the apostrophe followed by the letter ‘s’ in the earlier mark with the English language, it cannot be deducted that the French-speaking would be able to pronounce the earlier mark in accordance with the rules of English pronunciation. Therefore it was correct to compare the two marks at issue by applying the rules of French pronunciation to both of them, and was able to deduct the existence of a phonetic similarity.

Regarding the conceptual comparison of the signs the Board of Appeal held that there was no similarity between them. The Board was correct to point out, that the word ‘agile’ has a clear meaning in several Community languages, including French, in which it means ‘physically or mentally quick’, whereas the same consumer would see in the earlier mark, which is entirely devoid of meaning, reference either to a family name or a place name. It necessarily follows that the signs at issue are conceptually different, but conceptually different, even if  conceptual differences can in certain circumstances counteract the visual and phonetic similarities. Such counteraction, at least one of the signs at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately. The Court held that the conceptual difference between the signs at issue is not, in the circumstances of the present case, such as to neutralise the similarities found to exist.

Whereas the goods at issue were sports equipment and clothing and whereas the word ‘agile’ clearly has a laudatory character with regard to them, either with regard to the characteristics of the goods themselves or to an element connected with the sporting activity for which they are acquired, and therefore have limited distinctiveness in that regard. However, in light of the visual and phonetic similarities between the marks Aygill’s and Agile, it cannot be excluded that consumers of the goods in question might attribute the same conceptual content to the earlier mark as to the mark applied for. Therefore, in the circumstances of the present case, it is apparent that the effect of the conceptual difference between the signs at issue could attenuate the established visual and phonetic similarities, but not neutralise them. It follows that the signs at issue must be considered to be similar overall, but to a low degree with regard at least to the French-speaking public, which, apart from a visual similarity, will also perceive a phonetic similarity between them.


COMPARATIVE ADVERTISING  AND TRADE MARK USE

By judgment of the Court of Justice in Case C-533/06 of 12 June 2008 it was held that a trade mark proprietor is not entitled to prevent the use of a sign identical with, or similar to, a mark in a comparative advertisement if there is no likelihood of confusion on the part of the consumer between the advertiser and the proprietor of the mark or between the advertiser’s marks, goods or services and those of the proprietor of the mark

Under the Community trade mark directive (1), the proprietor of a mark is entitled to prevent the use, in the course of trade, of a sign which is identical with the trade mark in relation to goods or services which are identical and the use of a sign which is similar to the trade mark if there is a likelihood of confusion, which includes the likelihood of association between the sign and the trade mark.

The Community directive on comparative advertising (2) provides that comparative advertising is to be permitted under certain conditions, inter alia that it is not misleading, that it does not create confusion in the market place between the advertiser and a competitor or between trade marks, that it does not discredit or denigrate a trade mark, and that it does not take unfair advantage of a trade mark.

To advertise its mobile telephone services O2 uses bubble images in a host of ways and is the proprietor of two British national trade marks which consist of a static picture of bubbles.
In 2004, Hutchison 3G (‘H3G’), a competitor of O2 which markets its services under the name ‘3’, launched an advertising campaign for its pay-as-you-go service known as ‘Threepay’. To that end, it broadcast a television advertisement in which it compared the price of its services with those of O2. That advertisement began by using the name ‘O2’ and moving black-and-white bubble imagery, followed by ‘Threepay’ and ‘3’ imagery, together with a message that H3G’s services were cheaper in a specific way.

(1) Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1).
(2) Council Directive 84/450/EEC of 10 September 1984 concerning misleading and comparative advertising (OJ 1984 L 250, p. 17), as amended by Directive 97/55/EC of the European Parliament and of the Council of 6 October 1997 (OJ 1997 L 290, p. 18).

O2 brought proceedings for infringement of its bubbles trade marks before the High Court, although it accepted that the price comparison in the advertisement was true and that that advertisement was not misleading. The action was dismissed. O2 therefore appealed against that judgment before the Court of Appeal, which asked the Court of Justice whether a proprietor of a mark is entitled to prevent the use of a sign which is identical with, or similar to, its mark in a comparative advertisement which does not give rise to a likelihood of confusion between the advertiser and a competitor or between the advertiser’s marks, goods and services and those of a competitor.

As a preliminary point, the Court explains the interaction between the trade mark directive and the directive on comparative advertising. It considers that the use, in a comparative advertisement, of a sign identical with, or similar to, a mark of a competitor for the purposes of identifying the latter’s goods and services may be prevented under the trade mark directive. However, the Court notes that the legislature sought to promote comparative advertising and, to that end, to limit to a certain extent the right conferred by the mark.

In order to reconcile the protection of marks and the use of comparative advertising, the Court notes that the proprietor of a trade mark is not entitled to prevent the use, by a third party, of a sign identical with, or similar to, his mark, in a comparative advertisement which satisfies all the conditions under which comparative advertising is permitted. Nevertheless, if there is a likelihood of confusion between the advertiser and a competitor or between the advertiser’s trade marks, goods or services and those of a competitor, the advertisement does not satisfy all the conditions laid down in the directive on comparative advertising under which comparative advertising is permitted and the proprietor of the mark is entitled to prevent the use of a sign identical with, or similar to, his mark.

In response to the question referred by the Court of Appeal, the Court of Justice points out that a proprietor of a mark may prevent the use of a sign which is similar to his mark if four conditions are satisfied: that use must be in the course of trade; it must be without the consent of the proprietor of the mark; it must be in respect of goods or services which are identical with, or similar to, those for which the mark is registered; and it must affect or be liable to affect the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services, by reason of a likelihood of confusion on the part of the public. The Court notes that the first three conditions are satisfied in the case in the main proceedings. By contrast, in accordance with the referring court’s own findings, the use by H3G of bubble images similar to the trade marks did not give rise to a likelihood of confusion on the part of consumers. The advertisement, as a whole, was not misleading and, in particular, did not suggest that there was any form of commercial link between O2 and H3G. Consequently, the fourth condition is not satisfied in the case in the main proceedings.

Consequently, the Court finds that the proprietor of a registered trade mark is not entitled to rely on his trade mark rights to prevent the use, by a third party, in a comparative advertisement, of a sign similar to that mark in relation to goods or services identical with, or similar to, those for which that mark is registered where such use does not give rise to a likelihood of confusion on the part of the public.

Source: Press release of the European Court of Justice of 12 June 2008


THREE AND TWO STRIPES

By judgement in the Case C-102/07 of 10 April 2008 -  adidas AG and Others v. Marca Mode CV and Others - the European Court of Justice held that a general interest to leave certain signs like stripes being descriptive indications available to everybody does not restrict the exclusive rights of a trade mark owner per se, because he cannot prohibit third parties from using them if  such use is not unfair.

Figurative trade marks being composed by three vertical, parallel stripes of equal width and featured on the sides of sports and leisure garments in a colour contrasting with the basic colour of those garments on the one side and same products being amrked by trade marks being composed by only two parallel stripes and being coloured and contrasting similarily were firstly found unsimilar, because  the requirement of availability of certain signs is irrelevant in the assessment of likelihood of confusion. The assessment of likelihood must be based on the public’s perception of the goods covered by the mark of the proprietor on the one hand and the goods covered by the sign used by the third party on the other. The national court must determine whether the average consumer may be mistaken as to the origin of sports and leisure garments featuring stripe motifs in the same places and with the same characteristics as the stripes motif of adidas, except for the fact that they consist of two rather than three stripes.

Secondly  the Court held marks with a special reputation that their protection does not require the likelihood of confusion between the sign and the mark, if the relevant public establishes a link between the two owners of the conflicting marks. The requirement of availability is extraneous both to the assessment of the degree of similarity between the mark with a reputation and the sign used by the third party and to the link which may be made by the relevant public between that mark and the sign. In those cases likelihood of confusion cannot constitute a relevant factor for determining whether the use of the sign takes unfair advantage of the repute of the mark.

Finally, the Court stated that, even though the proprietor of a trade mark cannot prohibit a third party from using descriptive indications in accordance with honest practices, the requirement of availability does not constitute in any circumstances an independent limitation of the effects of the trade mark. In order for a third party to be able to plead the limitations of the effects of a trade mark contained in the directive on trade marks and to rely on the requirement of availability, the indication used by it must relate to one of the characteristics of the goods. The purely decorative nature of the two-stripe sign pleaded by the companies in question does not give any indication concerning one of the characteristics of the goods.

Source: Press release of the European Court of Justice



European community law and disclosure of personal data in civil proceedings on copyright law protection

Community law does not require the Member States, in order to ensure the effective protection of copyright, to lay down an obligation to disclose personal data in the context of civil proceedings

By judgment of the Court of Justice in Case C-275/06 Productores de Música de España (Promusicae) v Telefónica de España SAU it was ruled that community law does not require the Member States, in order to ensure the effective protection of copyright, to lay down an obligation to disclose personal data in the context of civil proceedings

There are several Community directives 1 whose purpose is that the Member States should ensure, especially in the information society, effective protection of industrial property, in particular copyright. Such protection cannot, however, affect the requirements of the protection of personal data. The directives on the protection of personal data 2 also allow the Member States to provide for exceptions to the obligation to guarantee the confidentiality of traffic data.

Promusicae is a Spanish non-profit-making organisation of producers and publishers of musical and audiovisual recordings. It applied to the Spanish courts for an order that Telefónica should disclose the identities and physical addresses of certain persons whom it provided with internet access services, whose IP address and date and time of connection were known. According to Promusicae, those persons were using the KaZaA file exchange program (peer-to-peer or P2P) and providing access in shared files of personal computers to phonograms in which members of Promusicae held the exploitation rights. It therefore sought disclosure of the above information in order to be able to bring civil proceedings against the persons concerned.

1 Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’) (OJ 2000 L 178, p. 1), Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (OJ 2001 L 167, p. 10), and Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (OJ 2004 L 157, p. 45, and corrigendum, OJ 2004 L 195, p. 16),

2 Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on the protection of individuals with regard to the processing of personal data and on the free movement of such data (OJ 1995 L 281, p. 31) and Directive 2002/58/EC of the European Parliament and of the Council of 12 July 2002 concerning the processing of personal data and the protection of privacy in the electronic communications sector (Directive on privacy and electronic communications) (OJ 2002 L 201, p. 37).

Telefónica argued that, under Spanish law,3 the communication of the data sought by Promusicae was authorised only in a criminal investigation or for the purpose of safeguarding public security and national defence.

The Spanish court asks the Court of Justice of the European Communities whether Community law requires the Member States to lay down, in order to ensure effective protection of copyright, an obligation to communicate personal data in the context of civil proceedings.

The Court of Justice notes that the exceptions permitted by the directives on the protection of personal data include the measures necessary for the protection of the rights and freedoms of others. As the directive on privacy and electronic communications does not specify the rights and freedoms concerned by that exception, it must be interpreted as expressing the Community legislature’s intention not to exclude from its scope the protection of the right to property or situations in which authors seek to obtain that protection in civil proceedings. It does not therefore preclude the possibility for the Member States of laying down an obligation to disclose personal data in the context of civil proceedings. However, it does not compel the Member States to lay down such an obligation.

As to the directives on intellectual property, the Court of Justice finds that they too do not require the Member States to lay down, in order to ensure effective protection of copyright, an obligation to communicate personal data in the context of civil proceedings.

That being so, the Court points out that the present reference for a preliminary ruling raises the question of the need to reconcile the requirements of the protection of different fundamental rights, namely the right to respect for private life on the one hand and the rights to protection of property and to an effective remedy on the other.

The Court concludes that the Member States must, when transposing the directives on intellectual property and the protection of personal data, rely on an interpretation of those directives which allows a fair balance to be struck between the various fundamental rights protected by the Community legal order. Further, when implementing the measures transposing those directives, the authorities and courts of the Member States must not only interpret their national law in a manner consistent with the directives but also make sure that they do not rely on an interpretation of them which would be in conflict with those fundamental rights or with the other general principles of Community law, such as the principle of proportionality.

3 Law 34/2002 on information society services and electronic commerce of 11 July 2002 (BOE No 166 of 12 July 2002, p. 25388).

Press release of the European Court of Justice 5/08  29 January 2008

PRESS RELEASE No 11/08 off 26 February 2008
Judgment of the Court of Justice in Case C-132/05
Commission of the European Communities v Federal Republic of Germany

Similarity of descriptive marks

By judgment of the European Court of first instance (Second Chamber) of 27 February 2008 it was held that the word mark WORLDLINK and an earlier national figurative mark LiNK covering similar financial services were confusingly similar - Case T‑325/04.

The court found that the services ‘banking services for the dispensing of cash; funds transfer and payment services; financial information services’ are covered by the term ‘financial affairs’as a general category of services. In view of the descriptive nature of the element ‘LINK’ the court confirmed preceding case‑law, that for the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see Case T-153/03 Inex v OHIM – Wiseman (Representation of a cowhide) [2006] ECR II-1677, paragraph 35 and the case‑law cited). Whereas the element ‘link’ may be descriptive per se in context with ‘banking services for the dispensing of cash; funds transfer and payment services; financial information services’, it was not contested that ‘link’ will be perceived by the relevant public as meaning ‘that which connects’, especially because financial services are usually provided by means of an electronic network connecting the various players and comprising subsequent connections.  However for the relevant consumers, namely all consumers in the United Kingdom, the purpose of the financial services were not to create and to maintain connections, but to enable  management of their financial resources, to dispose of them and to obtain information in relation thereto. Consequently, that public will not perceive the term ‘link’ as being directly descriptive of one of the aspects of the financial services, but at most as being allusive, given that communication links are used in the provision of those services.  Regarding the allegedly sceptical approach of the trade mark registration authorities in relation to the distinctive nature of the element ‘link’, it must be recalled, that OHIM and the Community judicature are not bound by decisions taken at Member State level, which may however be taken into consideration in the assessment of an application for registration of a Community trade mark (Case T‑106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II‑723, paragraph 47, and Case T‑222/02 HERON Robotunits v OHIM (ROBOTUNITS) [2003] ECR II‑4995, paragraph 52). Similarly, the legality of the decisions of Boards of Appeal must be assessed solely on the basis of Regulation No 40/94, as interpreted by the Community judicature, and not on the basis of a previous decision‑making practice of those boards (STREAMSERVE, paragraph 66).

According to settled case-law, the global assessment of the likelihood of confusion, as far as concerns the visual, aural or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant components (see Case T‑292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II‑4335, paragraph 47 and the case‑law cited). An element of a mark may be considered dominant if it is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 33). When assessing the dominant character of one or more components of a complex trade mark, account must be taken of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (MATRATZEN, paragraph 35). Regarding the existence of dominant elements in the conflicting signs the court found that the element ‘link’ was the only word element of the earlier mark, occupying a central position and representation in large characters. In addition, the figurative element, positioned to the right of the word element of the earlier mark, to which the applicant refers, represents, in a stylised manner, two intertwined circles forming a link. Accordingly, that element will be perceived by the relevant public only as an illustration of the conceptual content of the word element ‘link’. From this it was concluded, that the earlier mark was dominated by the element ‘link’. The court held the relevant English‑speaking public would break down the mark WORLDLINK into the elements ‘world’ and ‘link’, because they were common words in the English language.

Visually and phonetically, the weight of the element WORLD was considered greater than the weight of the word LINK, because according to the rules of English grammar the element ‘world’ will be perceived by the relevant consumers, on account of its position at the beginning, as an adjective meaning ‘global’ and qualifying the element ‘link’. Thus, the conceptual weight of the element ‘world’ will be less than that of the element ‘link’, since the first element is subordinate to the second one. Moreover, on account of its meaning, the element ‘world’ will be perceived as being descriptive of one aspect of the services covered, since financial services are often provided at a global level, whilst the element ‘link’ is at most allusive in relation to those services, as was found at paragraph 68 above. It follows that, conceptually, the element ‘link’ is significantly more important in the overall impression given by the mark applied for. However, its distinctive character is not sufficient to render the other element negligible, which means that it cannot be regarded as the dominant element of that mark. In the light of the foregoing the court noted that, visually and phonetically, the conflicting signs display a certain degree of similarity on account of their common element ‘link’. That finding is not called in question by the argument that the pronunciation of ‘worldlink’ places the stress on the first syllable. That fact is not such as to render the element ‘link’ imperceptible for the relevant consumer. However, the visual and phonetic similarity owing to the common element ‘link’ is weakened, without being completely neutralised, by the presence of the element ‘world’ positioned at the beginning of the mark applied for. Consequently, the signs at issue are slightly similar visually and phonetically. Conceptually, the earlier mark will be perceived by the relevant public as meaning a ‘link’, whilst the mark applied for will be perceived as meaning ‘global link’. Those two interpretations are very close in so far as they are based on the same concept and in so far as they are distinguished only by the addition of a geographical qualifier, which will be perceived as describing the fact that the relevant services are provided at a global level. The two marks at issue are therefore very similar conceptually. Given, first, their slight visual and phonetic similarity and, second, their strong conceptual similarity, the Board of Appeal did not err in finding in essence, that the signs at issue, assessed as a whole, display a certain degree of similarity.

 According to settled case-law, 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. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the perception that the relevant public has of the signs and goods or services at issue, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between similarity of the signs and similarity of the goods or services designated (see Case T‑162/01 Laboratorios RTB v OHMI – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33, and PICARO, paragraphs 49 and 50 and the case‑law cited). In the present case, it follows from the examination carried out above that the relevant services are identical and that the signs at issue display a certain degree of similarity, since the mark applied for differs from the dominant element in the earlier mark only through the addition of an element which will be perceived by relevant consumers as a descriptive geographical qualifier. Accordingly, it must be held that there is a likelihood of confusion, notwithstanding the fact that the earlier mark is to a certain extent allusive. Although that fact means, as the applicant submits, that the intrinsic distinctive character of the earlier mark is limited, and although it is, consequently, likely to reduce that likelihood (see, to that effect, Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 24), it is not such as to preclude it in the circumstances of the present case.

Thus  the finding that there is a likelihood of confusion in the present case does not amount to conferring on the intervener a monopoly on the use of the element ‘link’. This case concerns only, first the earlier mark LiNK and the mark applied for WORLDLINK and, second, the services covered by those two marks. Given that the likelihood of confusion must be assessed by reference to all factors relevant to the circumstances of the case, the finding that there is a likelihood of confusion in this case does not prejudge the outcome of other cases involving other trade mark applications or other financial services. In the second place, it should be noted that, in its application, the applicant did not set out in detail the argument relating to the alleged peaceful coexistence between the earlier mark and the applicant’s national mark WORLDLINK, and nor did it submit to the Court evidence establishing, to the requisite standard, that coexistence. In addition, as OHIM stated, the peaceful coexistence of two marks may result from reasons other than the absence of likelihood of confusion between them (see, to that effect, Case T-31/03 Grupo Sada v OHMI – Sadia (GRUPO SADA) [2005] ECR II‑1667, paragraph 86), which means that that fact is not such as to preclude, of itself, such a likelihood. Lastly, it must be pointed out that the applicant’s national mark WORLDLINK is registered for ‘electronic and paper‑based banking services, all relating to multi-currency payment systems’. Although those services fall within the category ‘financial affairs’ covered by the mark applied for and against which the opposition is directed, they are none the less considerably more specific than the services included in that category as a whole, since that category also includes services displaying different characteristics. Since those other services are not covered by the national mark WORLDLINK, the coexistence of that mark with the earlier mark is not relevant in itself for assessing, to the extent that those services are concerned, the likelihood of confusion between the mark applied for and the earlier mark.  In the third place, and lastly, the difference between the services covered by the mark applied for and those covered by the national mark WORLDLINK, established in the previous paragraph, renders irrelevant for this case the alleged position of the Trade Marks Registry in relation to that mark. In the light of all the foregoing, it must be held that the Board of Appeal did not err in finding that there is a likelihood of confusion between the mark applied for and the earlier mark. 


Court of Justice of the European Union
Press release No 104/10
Luxembourg, 14 October 2010

Judgment in Case C-280/08 P

Deutsche Telekom AG v Commission

The Court of Justice upholds the €12.6 million fine imposed by the Commission on Deutsche Telekom for abuse of its dominant position in the fixed telephony markets in Germany
European Union law prohibits any abuse by one or more undertakings of a dominant position within the internal market or in a substantial part of it in so far as it may affect trade between the Member States.Before the full liberalisation of telecommunications markets in Germany on 1 August 1996, Deutsche Telekom enjoyed a legal monopoly in the retail provision of fixed-line telecommunications services.

Following the lodging of complaints from competitors of Deutsche Telekom, the Commission decided (1) on 21 May 2003 that Deutsche Telekom had been abusing its dominant position in the markets for direct access to its fixed telephony network since 1998. That abuse consisted in charging competitors prices for network access services (‘local loop access services’) that were higher than the retail prices which Deutsche Telekom’s end-users were charged for access. Such pricing forced competitors to charge their end-users prices higher than those which Deutsche Telekom charged its own end-users.Consequently, the Commission fined Deutsche Telekom €12.6 million.

Deutsche Telekom brought an action before the Court of First Instance (now ‘the General Court’) for annulment of the Commission’s decision or, at the very least, for a reduction of the fine imposed. By judgment of 10 April 2008, (2) the General Court dismissed the action, holding, in essence, that the Commission was entitled to impose that fine on Deutsche Telekom on account of the implementation of an unfair pricing practice, resulting in a margin squeeze generated by an inappropriate spread between wholesale charges for local loop access services and retail charges for end-user access services.Deutsche Telekom appealed to the Court of Justice against that judgment of the General Court.

In its judgment of 14 October 2010 the Court finds, on examining Deutsche Telekom’s grounds of appeal, that the General Court did not commit any error of law when it dismissed Deutsche Telekom’s action against the Commission’s decision.

As regards the attributability of the infringement, the Court considers that even though wholesale prices for local loop access services were set by national regulatory authorities, the General Court was entitled to hold that the margin squeeze at issue was a practice attributable to Deutsche Telekom, since the latter had sufficient scope to adjust the retail prices charged to its end-users, notwithstanding the fact that those prices were subject to some regulation. Admittedly it is not inconceivable that the national regulatory authorities may themselves have infringed European Union law, and therefore that the Commission could have brought an action for failure to fulfil obligations against the Federal Republic of Germany. However, that circumstance does not, according to the Court, affect the scope which Deutsche Telekom had to adjust its retail prices.

As regards the abusive nature of the margin squeeze at issue, the Court confirms that such a practice is, as such, one of the cases of abuse of a dominant position prohibited under European Union law, and that there is no need to demonstrate that wholesale prices or retail prices are, in themselves, abusive. By squeezing the margins of its competitors who are just as efficient, thereby driving them from the market, Deutsche Telekom strengthens its dominant position and, consequently, causes damage to consumers by limiting the choices available to them as well as their prospects of benefiting from a longer-term reduction of retail prices for end-user access services as a result of competition exerted in that market.

With regard to the method used to determine whether a margin squeeze is abusive, the Court considers that the General Court and the Commission were entitled to rely on the  'as-efficient-competitor’ test, which consists in considering whether the pricing practices of a dominant undertaking could drive an equally efficient economic operator from the market, relying solely on the dominant undertaking’s charges and costs instead of on the particular situation of its competitors. Such a test can establish whether Deutsche Telekom would have been able to offer its retail services to end-users otherwise than at a loss if it had first been obliged to pay its own wholesale prices for local loop access services. In addition, the test is consistent with the principle of legal certainty in so far as it allows dominant undertakings, which necessarily know what their own costs and charges are, to assess the lawfulness of their own conduct.

Finally, as regards the effects of the conduct at issue, the Court of Justice, in common with the General Court, takes the view that, in order to be regarded as abusive, a margin squeeze must have made market penetration more difficult for Deutsche Telekom’s competitors. Proof of certain anti-competitive effects is therefore required. In the present case, the Court considered that the General Court was entitled to find that there was proof of such effects. Since the wholesale local loop access services provided by Deutsche Telekom are indispensable to its competitors’ effective penetration of the retail markets for the provision of services to end-users, a margin squeeze, in principle, hinders the growth of competition in the retail markets in services to end-users, given that, in those circumstances, a competitor who is just as efficient as the appellant cannot carry on his business in the retail market for end-user access services without incurring losses. Consequently, the Court dismisses the appeal and upholds the fine of €12.6 million imposed by the Commission.

1 Commission Decision 2003/707/EC of 21 May 2003.
2 Case T-271/03 Deutsche Telekom v Commission. See also Press Release 26/08.


Court of Justice of the European Union
PRESS RELEASE No 100/10
Luxembourg, 7 October 2010

Advocate General’s Opinion in Case C-235/09
DHL Express (France) SAS v Chronopost SA

Advocate General Cruz Villalón considers that an order of a competent national court prohibiting an infringer from continuing to use a registered Community trade mark has, in principle, effect throughout the entire area of the European Union

The domestic courts of the other Member States must recognise coercive measures which ensure compliance with the prohibition and enforce them in accordance with their national law

The Community trade mark regulation (Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) provides for a uniform intellectual property right effective throughout the entire area of the European Union and, for the purposes of protecting that right, establishes a two-tier system of specialised jurisdiction. On the one hand, the Office for Harmonisation in the Internal Market (OHIM), from whose decisions an appeal may lie to the General Court and, ultimately, the Court of Justice, decides disputes between private parties and the administration responsible for registering Community trade marks. On the other hand, the ‘Community trade mark courts’, a limited number of national courts of first and second instance designated by each Member State, decide disputes between private parties. In the context of that system, the national courts act as special courts of the European Union.
In accordance with the Regulation, where Community trade mark courts find infringement or threatened infringement of a Community trade mark, they are to issue an order prohibiting the infringer from proceeding with the acts which infringed or would infringe the Community trade mark. They may also take such measures in accordance with their national law as are aimed at ensuring that that prohibition is complied with.

Chronopost SA is the proprietor of the French and Community trade marks ‘WEBSHIPPING’ relating, in particular, to services for the collection and delivery of mail. After those marks had been registered, DHL Express (France) SAS used the same word to designate an express mail management service accessible principally via the internet. In 2007, the Tribunal de Grande Instance de Paris (Regional Court, Paris), acting as a Community trade mark court, declared that there had been trade-mark infringement, prohibited DHL from proceeding with the acts constituting the infringement, and imposed a periodic penalty payment on it, that is to say, a financial penalty should it fail to comply with the prohibition.

At last instance, DHL brought an appeal in cassation before the Cour de Cassation (Court of Cassation, France). Chronopost, for its part, lodged a cross-appeal contesting the fact that the effects of the prohibition and the periodic penalty payment had been limited to French territory. In that context, the Cour de Cassation made a reference to the Court of Justice for a preliminary ruling in order to ascertain, in essence, the territorial scope of the prohibition issued by a Community trade mark court and of the coercive measures adopted in order to ensure that that prohibition is complied with.

In his Opinion delivered on 7 October 2010, Advocate General Cruz Villalón considers, first, that, in principle, a prohibition issued by a national court acting as a Community trade mark court has effect as a matter of law throughout the entire area of the European Union.

In that connection, the Advocate General recalls that the Regulation confers jurisdiction on the competent national court to declare that a trade mark has been infringed in one or more Member States, so that its proprietor may apply to a single court in order to bring the acts of infringement to an end in several Member States. The declaration of infringement relates to a trade mark granted by the European Union, whose judicial protection is entrusted to special national courts of the EU and therefore, in principle, the declaration has effect throughout the entire area of the EU.

However, where the infringement or action for infringement is limited to a specific geographical or linguistic area, the court’s order is limited territorially. It follows that, since the prohibition is the natural consequence of the declaration of infringement, the territorial scope of the prohibition corresponds, in principle, to the scope of the infringement.

Second, the Advocate General considers that coercive measures have effect within the territory in which the declaration of infringement was made and the prohibition issued.

In fact, the quantification and enforcement of those measures take place at a later stage, when, if the prohibition has been infringed, the penalty is applied. The court which has imposed the periodic penalty payment will have jurisdiction as regards its quantification and enforcement only where the prohibition is infringed in the Member State of that court. By contrast, where the prohibition is infringed in another Member State, quantification and enforcement will be a matter for the court of that Member State.

However, in order to ensure that the prohibition is complied with, the court of the Member State in which the prohibition has been infringed is obliged to recognise the effects of the periodic penalty payment imposed by the Community trade mark court of the other Member State, in accordance with the rules on recognition laid down by the Brussels I Regulation (Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (OJ 2001 L 12, p. 1).
.
At the same time, such measures must be adjusted to the specific features of each legal system. Thus, the court of the Member State in which the prohibition has been infringed, if its national law so permits, is simply to recognise the order and apply the periodic penalty payment to the specific case. By contrast, if its national law does not provide for such a measure, it must achieve enforcement in accordance with its own national provisions.

NOTE: The Advocate General’s Opinion is not binding on the Court of Justice. It is the role of the Advocates General to propose to the Court, in complete independence, a legal solution to the cases for which they are responsible. The Judges of the Court are now beginning their deliberations in this case. Judgment will be given at a later date.

NOTE: A reference for a preliminary ruling allows the courts and tribunals of the Member States, in disputes which have been brought before them, to refer questions to the Court of Justice about the interpretation of European Union law or the validity of a European Union act. The Court of Justice does not decide the dispute itself. It is for the national court or tribunal to dispose of the case in accordance with the Court’s decision, which is similarly binding on other national courts or tribunals before which a similar issue is raised.



Court of Justice of the European Union
Press Release No 91/10
Luxembourg, 14 September 2010
Press and Information

Judgment in Case C-48/09 P Lego Juris v OHIM

The Lego brick is not registrable as a Community trade mark, because it is a sign consisting exclusively of the shape of goods necessary to obtain a technical result

In accordance with the Community trade mark regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) a Community trade mark may consist of any signs capable of being represented graphically, such as words, designs, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. However, signs which consist exclusively of the shape of goods which is necessary to obtain a technical result are not to be registered.

On 1 April 1996 Lego, a Danish toy manufacturer, filed an application at OHIM (Office for Harmonisation in the Internal Market), the Community trade mark office, for registration as a Community trade mark of a red toy building brick. OHIM initially registered the mark at issue. However, upon application by Mega Brands, which produces toy bricks having the same shapes and dimensions as those of Lego’s bricks, the Cancellation Division of OHIM declared that the mark was invalid on the ground that clearly the Lego brick’s specific features were adopted to perform a utilitarian function, and not for identification purposes. The most important element of the sign composed of the Lego brick is the two rows of studs on the upper surface of that brick, which are necessary to obtain the intended technical result of the product, that is to say, the assembly of toy bricks. After the Grand Board of Appeal of OHIM upheld the declaration that the mark was invalid, Lego brought an action before the General Court against the Grand Board of Appeal’s decision.

In its judgment of 12 November 2008 Case T-270/06 Lego Juris v OHIM – Mega Brands (Red Lego brick) the General Court held, in particular, that European Union law precludes registration of any shape consisting exclusively, in its essential characteristics, of the shape of the goods which is technically causal of, and sufficient to obtain, the intended technical result, even if that result can be achieved by other shapes using the same or another technical solution. Lego then brought an appeal before the Court of Justice against that judgment.

First of all, the Court finds that the main purpose of the prohibition on registration as a trade mark of any sign consisting of the shape of goods which is necessary to obtain a technical result is to prevent trade mark law granting an undertaking a monopoly on technical solutions or functional characteristics of a product. Thus, undertakings may not use trade mark law in order to perpetuate, indefinitely, exclusive rights relating to technical solutions.

When the shape of a product merely incorporates the technical solution developed by the manufacturer of that product and patented by it, protection of that shape as a trade mark once the patent has expired would considerably reduce the opportunity for other undertakings to use that technical solution. In accordance with the law of the European Union, technical solutions are capable of protection only for a limited period, so that subsequently they may be freely used by all economic operators.

In addition, the Court finds that by restricting the prohibition on registration to signs which consist ‘exclusively’ of the shape of goods which is ‘necessary’ to obtain a technical result the legislature




Court of Justice of the European Union
PRESS RELEASE No 77/10
Luxembourg, 29 July 2010

Judgment in Case C-214/09 P

Anheuser-Busch Inc. v OHIM and Budĕjovický Budvar, národní podnik
Anheuser-Busch may not register the word ‘Budweiser’ as a Community trade mark for beer

Budějovický Budvar, which brought opposition proceedings against that registration, was not obliged to provide, automatically, proof of renewal of its earlier identical mark during the period set for submission of evidence in support of its opposition. In 1996, the American brewer Anheuser-Busch applied to OHIM (the Office for Harmonisation in the Internal Market) for registration of the word ‘Budweiser’ as a Community trade mark for beer and malted alcoholic and non-alcoholic beverages. The Czech brewery Budějovický Budvar brought opposition proceedings against such registration relying on its earlier international word mark BUDWEISER, protected in particular in Germany and Austria.Budějovický Budvar provided evidence showing its ownership of the earlier trade mark but the protection enjoyed by that mark expired during the period which OHIM had set for submission of evidence in support of the opposition. As OHIM had not requested during that period that Budějovický Budvar provide evidence of renewal of its earlier mark, the company submitted that evidence – on its own initiative – but at a later stage in the opposition proceedings.

OHIM rejected Anheuser-Busch’s application for a Community trade mark on the ground that the mark applied for was identical to Budějovický Budvar’s earlier mark. OHIM also found that the goods listed in Anheuser-Busch’s application were essentially identical to the goods ‘beer of any kind’ covered by the earlier mark. In view of the identity of the marks and the obvious similarities between the goods concerned, OHIM also upheld Budějovický Budvar’s opposition in relation to malted non-alcoholic beverages.

Anheuser-Busch brought an action before the General Court against the OHIM decision. In its judgment delivered in March 20091, the General Court upheld OHIM’s decision, finding that Budějovický Budvar already held the right in Germany and Austria to use the word ‘BUDWEISER’ commercially for beer. The General Court also held that the Czech brewery had not been obliged to produce, on its own initiative, evidence of renewal of its earlier mark during the period fixed by OHIM for the submission of evidence. Anheuser-Busch challenged the judgment before the Court of Justice, relying inter alia on the argument that, as the protection afforded to the earlier mark had expired before the end of the period fixed for the submission of evidence, Budějovický Budvar ought to have submitted evidence of the mark’s renewal within that period. The Court of Justice today finds that Budějovický Budvar was not obliged to provide, automatically, within that period evidence of renewal of its earlier mark even though the protection afforded by that mark expired between the date on which notice of opposition had been filed and the end of that period. In fact, Budějovický Budvar would have been obliged to submit such evidence only if OHIM had expressly requested it. OHIM did not, however, make such a request. Furthermore, the new rules relating to the production of evidence, which entered into force in 2005 and which now impose an express obligation on an opponent to produce proof of renewal of its earlier trade mark, may not be applied retroactively to the present case. The Court therefore finds that, as Budějovický Budvar was not required to prove renewal of its trade mark during the period set for the submission of evidence in support of its opposition, it could submit the renewal certificate for the mark after that period had expired.


BUD Budweis and České Budĕjovice

By judgment of 16 December 2008 of the Court of First Instance in Joined Cases T-225/06, T-255/06, T-257/06 and T-309/06 (Budĕjovický Budvar v OHIM) it was held that OHIM made several errors by rejecting the opposition brought by Budĕjovický Budvar against Anheuser-Busch’s applications for registration. Between 1996 and 2000 the American brewing company Anheuser-Busch made applications to the Office for Harmonisation in the Internal Market (OHIM) for the registration as Community trade marks of the word sign BUD and a figurative sign containing the word ‘bud’ for a wide range of goods and services, including beer. The Czech brewing company Budĕjovický Budvar filed notices of opposition against registration of the Community trade marks, in respect of all of the goods covered by the application. In support of its opposition, the Czech company relied, inter alia, on the appellation of origin ‘bud’ registered previously for beer under the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration and protected as such in France, and the appellation ‘bud’ protected under a treaty entered into by Austria and the former Czechoslovak Socialist Republic on the protection of indications of source, appellations of origin and other designations referring to the source of agricultural and industrial products, signed on 11 June 1976. OHIM rejected Budĕjovický Budvar’s opposition in its entirety on the ground that the sign BUD could not be deemed to be an appellation of origin, that the Czech company had not proved genuine use in trade of the appellation of origin ‘bud’ and that that appellation did not entitle Budĕjovický Budvar to prohibit use of the word ‘bud’ as a trade mark, in Austria or in France. In particular, OHIM considered that European consumers could not perceive the word ‘bud’ to be an abbreviation of the name of the Czech city České Budĕjovice, the German name of which is ‘Budweis’.

Budĕjovický Budvar brought actions before the Court of First Instance against the decisions rejecting its opposition, which observes, firstly, that OHIM must take account of earlier rights which are protected in the Member States, and cannot call into question how they are classified. Consequently, in so far as the protection granted in Austria and in France to the appellation ‘bud’ is valid under the national law of those States, OHIM is obliged to take account of the effects of that protection. Next, the Court of First Instance holds that, by having required Budĕjovický Budvar to prove a ‘genuine’ use of the appellations ‘bud’ and to do so on each of the territories where those appellations were protected, OHIM made an error of law. OHIM ought merely to have determined whether the signs concerned were used in the context of a commercial activity with a view to economic advantage, and not as a private matter, whatever the territory concerned by that use. Further, the Court of First Instance considers that the Czech company successfully proved that the appellations concerned are used in the course of trade. As regards OHIM’s assertion that Budĕjovický Budvar uses the sign BUD as a trade mark, the Court of First Instance observes that there is nothing to suggest that the expression ‘bud’, displayed on the goods concerned, refers to the commercial origin rather than to the geographical origin of the product. Lastly, the Court of First Instance holds that OHIM made an error by not taking into account all the relevant elements of fact and law to determine whether Austrian and French law gave Budĕjovický Budvar the right to prohibit use of a subsequent trade mark.On all of those grounds, the Court of First Instance annuls OHIM’s decisions.

Sourrce: Press release of the court of 16 December 2008



Israel joins the International Trademark System

Israel joined the international trademark system following the deposit of its instrument of accession to the Madrid Protocol for the International Registration of Marks with WIPO Director General Francis Gurry. The Madrid System will become operational in Israel on September 1, 2010. It trademark owners a cost-effective, user-friendly and streamlined mean of protecting and managing their trademark portfolio internationally.

Under the WIPO-administered Madrid System a trademark owner may protect a mark in up to 85 countries by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs).  Applicants wishing to use the Madrid system must apply for trademark protection in a relevant national or regional trademark office before seeking international protection. An international registration under the Madrid system produces the same effects as an application for registration of the mark in each of the contracting parties designated by the applicant.
If protection is not refused by the trademark office of a designated contracting party, the status of the mark is the same as if it had been registered by that office.  Thereafter, the international registration can be maintained and renewed through a single procedure.  Thus, the system provides a cost-effective and efficient way for trademark holders to secure and maintain protection for their marks in multiple countries.

Trademarks are a key component of any successful business marketing strategy as they allow companies to identify, promote and license their goods or services in the marketplace and to distinguish them from those of their competitors, and cement customer loyalty. A trademark symbolizes the promise of a quality product and in today’s global and increasingly electronic marketplace, a trademark is often the only way for customers to identify a company’s products and services. Trademark protection hinders moves to “free ride” on the goodwill of a company by using similar distinctive signs to market inferior or similar products or services. Loss, dilution or infringement of a high-value trademark could prove devastating to a business.

Israel is the 85th member of the WIPO-administered international trademark system which is governed by two treaties, namely, the Madrid Agreement Concerning the International Registration of Marks (1891) and the Madrid Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989).

Source: WIPO Press Release of  June 1, 2010 - PR/2010/644



WIPO Launches Global On-line Resource to Facilitate Access to IP Information

WIPO launched on June 1, 2010, WIPO GOLD, a free, on-line global intellectual property (IP) reference resource that provides quick and easy access to a broad collection of searchable IP data and tools relating to, for example, technology, brands, designs, statistics, WIPO standards, IP classification systems and IP laws and treaties.

WIPO is committed to narrowing the global knowledge gap by facilitating the free-flow of IP information globally, and by improving access to and use of IP information. For example, much of the technological information found in patent documents is not published elsewhere.

Powerful databases, such as WIPO’s PATENTSCOPE® search service, makes it possible to conduct, free-of-charge, high-quality searches of data relating to over 1.7 million international patent applications filed under the PCT, and patent data collections of a growing number of countries.

Source: Press release of WIPO  PR/2010/645 of June 2, 2010



Court of Justice of the European Union
PRESS RELEASE No 32/10
Luxembourg, 23 March 2010

Judgment in Joined Cases C-236/08 to C-238/08
Google France and Google Inc. et al. v Louis Vuitton Malletier et al.

Google has not infringed trade mark law by allowing advertisers to purchase keywords corresponding to their competitors’ trade marks
Advertisers themselves, however, cannot, by using such keywords, arrange for Google to display ads which do not allow internet users easily to establish from which undertaking the goods or services covered by the ad in question originate

Community law on trade marks (First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) and Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) entitles proprietors of trade marks, subject to certain conditions, to prohibit third parties from using signs which are identical with, or similar to, their trade marks for goods or services equivalent to those for which those trade marks are registered.

Google operates an internet search engine. When an internet user performs a search on the basis of one or more key words, the search engine will display the sites which appear best to correspond to those key words, in decreasing order of relevance. These are referred to as the ‘natural’ results of the search.

In addition, Google offers a paid referencing service called ‘AdWords’. That service enables any economic operator, by means of the reservation of one or more keywords, to obtain the placing – in the event of a correspondence between one or more of those words and that/those entered as a request in the search engine by an internet user – of an advertising link to its site, accompanied by a commercial message. That advertising link appears under the heading ‘sponsored links’, which is displayed either on the right-hand side of the screen, to the right of the natural results, or on the upper part of the screen, above those results.

Vuitton, which is the proprietor of the Community trade mark ‘Vuitton’ and of the French national trade marks ‘Louis Vuitton’ and ‘LV’, Viaticum, which is the proprietor of the French trade marks ‘Bourse des Vols’, ‘Bourse des Voyages’ and ‘BDV’, and Mr Thonet, the proprietor of the French trade mark ‘Eurochallenges’, became aware that the entry, by internet users, of terms constituting those trade marks into Google’s search engine triggered the display, under the heading ‘sponsored links’, of links to sites offering imitation versions of Vuitton’s products and to sites of competitors of Viaticum and of the Centre national de recherche en relations humaines respectively. They therefore brought separate sets of proceedings against Google for declarations that it had infringed their trade marks.

The Cour de cassation (French Court of Cassation), ruling as a court of final instance in the sets of proceedings which the trade mark proprietors have brought against Google, has referred questions to the Court of Justice on whether it is lawful to use, as keywords in the context of an internet referencing service, signs which correspond to trade marks, where consent has not been given by the proprietors of those trade marks.

The use, in an internet referencing service, of keywords corresponding to other persons’ trade marks

The Court notes that, by purchasing the referencing service and selecting, as a keyword, a sign corresponding to another person’s trade mark, with the purpose of offering internet users an alternative to the goods or services of that proprietor, an advertiser uses that sign in relation to its goods or services. That is not the case, however, where a referencing service provider permits advertisers to select, as keywords, signs identical with trade marks, stores those signs and displays its clients’ ads on the basis of those keywords.

The Court states that the use, by a third party, of a sign which is identical with, or similar to, the proprietor’s trade mark implies, at the very least, that that third party uses the sign in its own commercial communication. A referencing service provider, however, allows its clients, namely the advertisers, to use signs which are identical with, or similar to, trade marks, but does not itself use those signs.

If a trade mark has been used as a keyword, the proprietor of that trade mark cannot, therefore, rely, as against Google, on the exclusive right which it derives from its mark. By contrast, it can invoke that right against those advertisers which, by means of a keyword corresponding to its mark, arrange for Google to display ads which make it impossible, or possible only with difficulty, for average internet users to establish from what undertaking the goods or services covered by the ad originate.

In such a situation – which is characterised by the fact that the ad in question appears immediately after the trade mark has been entered as a search term by the internet user concerned and is displayed at a point when the trade mark, in its capacity as a search term, is also displayed on the screen – the internet user may err as to the origin of the goods or services in question. The function of the trade mark, which is to guarantee to consumers the origin of goods or services (the trade mark’s ‘function of indicating origin’), is thus adversely affected.

It is for the national court to assess, on a case-by-case basis, whether the facts of the dispute before it point to an adverse effect, or a risk thereof, on the function of indicating origin.

With regard to the use, by internet advertisers, of a sign corresponding to another person’s trade mark as a keyword for purposes of the display of advertising messages, the Court also takes the view that that use is liable to have certain repercussions on the advertising use of that mark by its proprietor and on the latter’s commercial strategy. Those repercussions of third parties’ use of a sign identical with the trade mark do not of themselves, however, constitute an adverse effect on the ‘advertising function’ of the trade mark.

The liability of the referencing service provider

The Court has also been asked to rule on the liability of an operator such as Google in respect of the data of its clients which it stores on its server.
Questions of liability are governed by national law. European Union law, however, lays down restrictions on liability in favour of information society intermediary service providers (Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’) (OJ 2000 L 178, p. 1).

With regard to the question whether an internet referencing service, such as ‘AdWords’, is an information society service consisting in the storage of information supplied by advertisers and whether, on that ground, the liability of the referencing service provider may be limited, the Court rules that it is for the referring court to examine whether the role played by that service provider is neutral, in the sense that its conduct is merely technical, automatic and passive, pointing to a lack of knowledge of, or control over, the data which it stores.

If it proves to be the case that it has not played an active role, that service provider cannot be held liable for the data which it has stored at the request of an advertiser, unless, having obtained knowledge of the unlawful nature of those data or of that advertiser’s activities, it failed to act expeditiously to remove or to disable access to the data concerned.



Court of Justice of the European Union
PRESS RELEASE No 38/10
Luxembourg, 22 April 2010
Judgment in Case C-62/09

Association of the British Pharmaceutical Industry v Medicines and Healthcare Products Regulatory Agency

Public authorities may offer financial incentives to induce doctors to prescribe cheaper medicinal products
However, those authorities are required, first, to ensure that the incentive scheme is based on non-discriminatory objective criteria and, second, to make public, inter alia, the therapeutic evaluations relating to the scheme

The directive relating to medicinal products for human use ( Directive 2001/83/EC of the European Parliament and of the Council of 6 November 2001 on the Community code relating to medicinal products for human use (OJ 2001 L 311, p. 67), as amended by Directive 2004/27/EC of the European Parliament and of the Council of 31 March 2004 (OJ 2004 L 136, p. 34) prohibits, where medicinal products are being promoted to doctors or pharmacists, pecuniary advantages or benefits in kind from being supplied, offered or promised to such persons.

To reduce public expenditure on medicinal products, the national public health authorities in England and Wales introduced schemes providing doctors with financial incentives to prescribe to their patients medicinal products cheaper than other medicinal products in the same therapeutic class. However, choosing cheaper medicinal products with a different active substance might, in certain cases, have adverse consequences for the patient. The prescription of statins, which are cholesterol reducing substances, is primarily at issue in this case.

The High Court of Justice of England and Wales has asked the Court of Justice whether the prohibition on financial incentives in the directive precludes the system applied in England and Wales.
In today’s judgment, the Court finds that the prohibition in the directive concerns primarily the promotional activities carried out by the pharmaceutical industry and seeks to prevent promotional practices which may induce doctors to act in accordance with their economic interests when prescribing medicinal products.

By contrast, that prohibition does not apply to national public health authorities which, themselves, have competence for ensuring that the directive is applied for defining and to define the priorities for action in relation to public health policy, in particular so far as concerns the rationalisation of the public expenditure allocated to that policy.

In that regard, the Court notes that the health policy defined by a Member State and the public expenditure in that field do not pursue any profit-making or commercial aim. Therefore, the financial incentive scheme examined, which forms part of such a policy, cannot be regarded as seeking the promotion of commercial promotion of medicinal products. In addition, as regards that scheme, no danger to public health can be established in so far as the therapeutic value of the medicinal products favoured is constantly reviewed by the public authorities.

In those circumstances, it is permissible for those authorities to determine, on the basis of evaluations of the therapeutic qualities of the medicinal products by reference to their cost for the public budget, whether certain medicinal products containing a given active substance are, from the point of view of public finances, preferable to other medicinal products containing a different active substance, but falling within the same therapeutic class.

The Court points out, none the less, that the public authorities are required to make available to professionals in the pharmaceutical industry information showing that the scheme at issue is based on objective criteria and that there is no discrimination between national medicinal products and those from other Member States. In addition, those authorities must make such a scheme public and make available to those professionals the evaluations establishing the therapeutic equivalence of the active substances available belonging to the same therapeutic class covered by the scheme.
In the light of all the above findings, the Court holds that the financial incentive system examined is compatible with the directive and that, furthermore, it does not prejudice the objectivity of prescribing doctors.



Court of Justice of the European Union
PRESS RELEASE No 34/10
Luxembourg, 15 April 2010

Judgment in Case C-518/08   Fundación Gala-Salvador Dalí and Visual Entidad de Gestión de Artistas Plásticos (VEGAP) v Société des auteurs dans les arts graphiques et plastiques (ADAGP) and Others

Member States can determine the categories of persons capable of benefiting from the resale right after the death of the author of a work of art  However, in the present case, it is for the referring court to take account of all the relevant rules for determining the national law which governs the succession of Salvador Dalí’s resale right and, therefore, the actual successor to that right ( Directive 2001/84/EC of the European Parliament and of the Council of 27 September 2001 on the resale right for the benefit of the author of an original work of art (OJ 2001 L 272, p. 32) establishes an obligatory resale right for the benefit of an author of a work of art and, after his death, for the benefit of those entitled under him. The resale right is an intellectual property right which allows the author, and those entitled under him, to receive a royalty based on the sale price obtained for any resale of one of his works subsequent to its first transfer. That right benefits the author throughout his life and, thereafter, those entitled under him for 70 years after his death.

The French legislation limits the beneficiaries of that resale right after the death of the artist to his heirs and excludes all legatees. The artist cannot therefore bequeath that right by will. The painter Salvador Dalí died on 23 January 1989 in Spain, leaving five heirs at law, who were family members. In addition, by his will, Salvador Dalí established the Spanish State as sole legatee over his intellectual property rights. Those rights are administered by the Fundación Gala-Salvador Dalí, a foundation established under Spanish law, created in 1983 at the initiative of the painter himself.

In 1997 the Fundación Gala-Salvador Dalí granted to VEGAP, a Spanish society, an exclusive worldwide mandate to manage collectively and exercise copyright over the works of Salvador Dalí. VEGAP has, in addition, a contract with its French counterpart, ADAGP, which is responsible for the management of Salvador Dalí’s copyright in France. Since then, ADAGP has collected amounts in respect of the exploitation of Salvador Dalí’s works, which were transferred by VEGAP to the Fundación Gala Salvador Dalí, with the exception of those in respect of the resale right. Pursuant to French legislation, ADAGP paid the amounts in respect of the resale right directly to Salvador Dalí’s heirs.

Taking the view that, under Salvador Dalí’s will and Spanish law, the royalties levied upon sales at auction of the artist’s works in France should be paid to it, the Fundación Gala-Salvador Dalí and VEGAP summonsed ADAGP before the Tribunale de Grande Instance de Paris (Paris Regional Court) for payment of those royalties. In the course of those proceedings, the French court referred to the Court of Justice the question whether Directive 2001/84 precludes a provision of national law which reserves the benefit of the resale right solely to the artist’s heirs, to the exclusion of testamentary legatees.

In today’s judgment, the Court considers that, in the light of the objectives pursued by Directive 2001/84, Member States may make their own legislative choice in determining the categories of persons capable of benefiting from the resale right after the death of the author of a work of art. In that regard, the Court recalls that the adoption of Directive 2001/84 is based on two objectives. First, it seeks to ensure that authors of graphic and plastic works of art share in the economic success of their works. Second, the directive seeks to put an end to distortions of competition on the market in art inasmuch as the payment of a royalty in certain Member States might lead to displacement of sales of works of art into those Member States where the resale right is not applied.

As regards the first objective, which seeks to ensure a certain level of remuneration for artists, the Court finds that the attainment of that objective is in no way compromised by the transfer of the resale right to certain categories of persons to the exclusion of others after the death of the artist. As regards the second objective, the Court states that the European Union legislature sought to resolve a situation in which sales of works of art were concentrated in Member States in which the resale right was not applied, or where it was at a lower rate than that in force in other Member States, to the detriment of auction houses or art dealers based in the territory of the latter Member States.

Thus, while it was considered indispensable to provide for harmonisation concerning works of art and sales affected by the resale right as well as the basis for and rate of the royalty, the Court considers that the harmonisation brought about by that directive is limited to those domestic provisions that have the most direct impact on the functioning of the internal market. Therefore, there is no need to eliminate differences between national laws which cannot be expected to affect the functioning of the internal market, including legislation which determines the categories of persons capable of benefiting from the resale right after the death of the author of a work of art.

Moreover, the Court considers that that analysis is reinforced by the fact that, while the European Union legislature wanted those entitled under the author to benefit fully from the resale right after the death of that author, it nevertheless left to each Member State, in accordance with the principle of subsidiarity, the task of defining the persons capable of being categorised as those entitled under their national law. That being so, the Court explains however that it is for the referring court to take due account of all the relevant rules for the resolution of conflicts of laws of succession in order to determine which national law governs the succession of Salvador Dalí’s resale right and, therefore, who is the actual successor to that right under that national law.


General Court of the European Union
PRESS RELEASE No 31/10
Luxembourg, 18 March 2010
Press and Information
Judgment in Case T-9/07
Grupo Promer Mon Graphic SA v OHIM – Pepsico Inc

The General Court delivers its first judgment on the Community design

It annulled OHIM’s decision to dismiss the application for a declaration of invalidity against PepsiCo’s design for the shape of a ‘rapper’

The Community design was created by the Community (Council) Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), which defines the Community design as ‘the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.’ Designs which are novel and have individual character may be protected. The proprietor of a design may prevent any third party not having his consent from using it. The scope of that protection covers any design which does not produce on the informed user a different overall impression. In assessing the scope of protection, the degree of freedom of the designer in developing his design must be taken into consideration. A Community design may be declared invalid if, among other reasons, it is in conflict with a prior design.

On 9 September 2003, PepsiCo filed an application for registration of a Community design at OHIM, the Community trade mark office which is also responsible for registering Community designs, for the shape of a ‘rapper’ (a small, flat or slightly curved disc on which colour images can be printed). The Community design was registered for ‘promotional item[s] for games’. In February 2004, Grupo Promer Mon Graphic, a Spanish marketing and promotion company, filed an application for a declaration of invalidity against that design. In support of that application, the company relied on the existence of a prior right: a Community design, filed on 17 July 2003, for ‘metal plate[s] for games’.

OHIM dismissed the application for a declaration of invalidity, holding that the goods covered by the designs at issue concerned a particular category of promotional items, namely ‘rappers’ or ‘tazos’ (the Spanish name for ‘rappers’), and that, therefore, the freedom of the designer of those promotional items was severely restricted. Accordingly, the Board of Appeal concluded that the difference in the profile of the designs at issue was sufficient to conclude that they produced a different overall impression on the informed user.

Grupo Promer Mon Graphic claimed that the Court should annul that decision.

The Court considers that a Community design is in conflict with a prior design when, taking into consideration the freedom of the designer in developing the Community design, that design does not produce on the informed user a different overall impression from that produced by the prior design relied on.
In this case, the Court finds that OHIM properly found that the product in question belonged, within the broad category of promotional items for games, to the particular category of game pieces known as ‘pogs’, ‘rappers’ or ‘tazos’.

Similarly, OHIM was correct to find that the informed user could be a child in the approximate age range of 5 to 10 or a marketing manager in a company that makes goods which are promoted by giving away ‘pogs’, ‘rappers’ or ‘tazos’, the important point being that both those categories of person are familiar with the phenomenon of ‘rappers’.
OHIM was also correct to find that the designer’s freedom was severely restricted since he had to incorporate the common features of ‘rappers’ in his design. Moreover, the designer’s freedom was also limited in so far as those items had to be inexpensive, safe for children and fit to be added to the products which they promote.
By contrast, OHIM erred in finding that the two designs produce a different overall impression on the informed user. The Court considers that some of the similarities between the two designs were not the result of a restriction of the designer’s freedom. In particular, the central part did not have to be delineated by a circle; this could also have been done by a triangle, a hexagon or an oval. In addition, the designs are similar in that the rounded edge of the disc is raised in relation to the intermediate area of the disc between the edge and the raised central area, and the respective dimensions of the raised central part and the intermediate area of the disc, between the edge and the raised central part, are also similar.

Consequently, the Court annulled OHIM’s decision to dismiss the application for a declaration of invalidity.



Global Financial Crisis Hits International Trademark Filings in 2009

Source WIPO Pressrelease
Geneva, March 18, 2010
PR/2010/634

International trademark filings under WIPO’s Madrid System for the International Registration of Marks (“the Madrid system”) dropped by 16% in 2009 as a result of the global economic downturn, though increases were observed among some major users of the system, notably the European Union (EU) (3.1%) and Japan (2.7%), as well as in the Republic of Korea (ROK) (+33.9%), Singapore (+20.5%), Croatia (+17.5%) and Hungary (+14.5%).

WIPO received 35,195 international applications under the 84-member Madrid system compared to 42,075 in 2008.  Similarly, international trademark registrations were down 12% on 2008 with a total 35,925 international registrations in 2009.  Trademark registrations reflect the introduction of new products and services to the market and are sensitive to business cycles.  The comparatively smaller decrease (-1.2%) in the renewal of international trademark registrations, compared to 2008, reflects the value of established brands at a time when consumers opt for goods that are tried and trusted.  In 2009, 19,234 international trademark renewals were recorded.

“International trademark filings took a hit in 2009,” said WIPO Director General Francis Gurry, “this is not surprising given the difficult financial conditions and restrained consumer demand facing companies around the world.  While trademark protection is sound business practice in good times and bad, companies are more cautious about bringing new products to market when economic uncertainty is high.  That said, trademarks and the brands they underpin play a key role in value creation and provide the basis for business expansion when the economy recovers.”

Mr. Gurry noted “Historically, we know that demand for intellectual property rights declines in periods of recession.  These downturns are more strongly and rapidly felt in the area of trademarks which are more closely tied to market conditions.  Demand for intellectual property rights, however, had reached unprecedented levels prior to the crisis and we have every reason to believe that international trademark activity will pick up as economic growth solidifies and broadens.”


Regional and National Filing Trends

The EU accounted for over half of the international applications received – some 21,824 - in 2009.  This includes international applications filed through national trademark offices of the countries concerned and those filed through the Office of Harmonization for the Internal Market (OHIM) – applicants from the EU may opt to file through their national office or through OHIM.  Some 3,710 international applications were filed through OHIM in 2009 representing a 3.1% increase on figures for 2008.

Marked declines in the filing of international trademark applications were evident in a number of countries in 2009, including the Czech Republic (-34.6%), Sweden (-34%), Italy (‑32.2%), Spain (‑29.9%), Denmark (-27.1%), Benelux (-26.2%), and Germany (-22.9%). Significant decreases were also recorded in international applications received from France (-16.5%), Austria (-15.7%), China (‑14.3%), the United Kingdom (-13.3%), the United States of America (USA) (-13.1%) and the Russian Federation (-10.3%). 

However, the filing of international trademark applications rose in a number of countries in 2009 including the EU with a 3.1% increase and Japan with a 2.7% increase.  Significant increases were also recorded by the Republic of Korea (+33.9%), Singapore (+20.5%), Croatia (+17.5%) and Hungary (+14.5%).

Among major users, applicants in Germany filed 4,793 international applications, representing 13.6% of the total down 22.9% on 2008.  OHIM ranked second with 3,710 international applications reflecting a 3.1% increase on 2008 figures.  Applicants in France accounted for 3,523 international applications, representing 10.5% of the total and a decrease of 16.5% compared to 2008.  Businesses in the USA filed the fourth largest number of applications, with 3,201 applications or 9.1% of the total and a 13.1 % decrease compared to 2008.  Switzerland held its 5th ranking with 2,671 international applications, and a decrease of 7.4 %, followed by the Benelux countries (Belgium, Luxembourg and the Netherlands) with 1,968 international applications representing a decrease of 26.2% compared to 2008.

In 2009, the EU moved up two places to become the second largest user of the Madrid system.  Norway moved from 21st to 19th position, the ROK moved from 30th to 23rd position, Hungary from 27th to 25th position, and Singapore from 33rd to 28th position.

Developing countries accounted for 1,973 filings representing 5.6% of the total.  Within this category, the highest growth rates were seen in the ROK with a 33.9% increase, and Singapore with a 20.5% growth rate.

Top Holders and Top Applicants

With 136 international trademark applications, Novartis (Switzerland) was the largest filer in 2009 followed by Lidl (Germany), Henkel (Germany), Zhejiang Medicine Company (China), Shimano (Japan), KRKA (Slovenia), Richter Gedeon (Hungary), L’Oréal (France), BSH Bosch und Siemens (Germany), Egis Gyógyszergyár (Hungary), Pfizer (Switzerland), Janssen Pharmaceutica (Belgium), Bayer (Germany), Glaxo Group (UK), Boehringer Ingelheim (Germany), Nestlé (Switzerland), Sanofi Aventis (France), Callaway Golf Company (USA) and Siemens (Germany).

In May 2009, the number of international trademark registrations topped one million when Austrian “eco” company Grüne Erde, which specializes in natural wood, textile and cosmetic products, registered its mark. 

Henkel (Germany), with a total of 2,815, holds the largest number of international trademark registrations under the Madrid system.  The top twenty holders by the end of 2009 were: Henkel (Germany), Novartis (Switzerland), Janssen Pharmaceutica (Belgium), l’Oréal (France), Nestlé (Switzerland), Unilever (Netherlands), ITM Enterprises (France), BASF (Germany), Sanofi-Aventis (France), Siemens (Germany), Lidl (Germany), Bayer (Germany), Biofarma (France), Boehringer Ingelheim (Germany), Richter Gedeon (Hungary), Syngenta (Switzerland), Philips (Netherlands), Ecolab (Germany), Merck (Germany), Hofer  (Austria) and Deutsche Telekom (Germany).


Top Designated Countries

Madrid Union members were notified of 303,344 new designations (contained in new registrations or territorial extensions) in 2009, representing a 20% decrease compared to 2008 again reflecting the generally flat global economic conditions.  When submitting an international trademark application, applicants must designate those member states in which they want their mark to be protected.  Applicants can also extend the effects of an international registration to other members at a later date by filing a subsequent designation.  In this way, the holder of an international registration can expand the geographical scope of the protection of a mark in line with evolving business needs.

The top six in the ranking of most designated member states remained unchanged.  China (with 14,766 designations) continues to be the most designated country, followed by the Russian Federation, USA, Switzerland, the European Union and Japan.

The number of designations fell in all designated contracting parties, although a number of countries moved up the list of 40 most designated contracting parties.  For example, Viet Nam moved from 24th to 21st position, Bosnia and Herzegovina from 33rd to 26th position, Azerbaijan from 36th to 32nd position, Georgia (from 35th to 33rd position) and Albania (from 40th to 35th position).  Two countries entered the top 40 most designated countries in 2009, namely, Iran (37th) and Egypt (39th).


Profile and Costs of Registrations Recorded in 2009

In 2009, on average, about seven Madrid Union members were designated per registration by applicants seeking international trademark protection under the Madrid system. More than half (62%) of these registrations sought protection in five or less export markets.

In submitting a trademark application, an applicant has to specify the goods or services to which the trademark will be applied in accordance with an international classification system known as the “Nice Classification”.  The most popular classes of goods and services in international trademark registrations recorded in 2009 were Class 9 (covering, for example, computer hardware and software) representing 8.3% of the total, Class 35 (covering services such as office functions, advertising and business management) which represented 7.1% of the total, Class 42 (covering services provided by for example, scientific, industrial or technological engineers and computer specialists) which represented 5.6% of the total;  Class 5 (covering mainly pharmaceuticals and other preparations for medical purposes), Class 25 (covering clothing, footwear and headgear) and Class 41 (covering services in the area of education, training, entertainment, sporting and cultural activities) each represented 4.7% of the total.

In 2009, applicants paid on average 3,408 Swiss francs for an international registration; for 57% of registrations the fees paid were less than 3,000 Swiss francs.

The Madrid system allows for the central administration of an international trademark portfolio, as it provides for procedures which enable trademark holders to record modifications to international registrations (for example, changes of ownership, changes in name or address of the holder or changes in the appointment of the representative of the holder) through the submission of a single request to WIPO.  Modifications recorded in 2009 totaled 90,136 representing a 1.3% decrease over 2008.


Active International Registrations

Over half a million (515,562) international registrations were active in the International Register at the end of 2009, containing some 5.6 million active designations and representing a 2.4% increase relative to 2008.  These registrations belong to 169,939 right holders who are mostly small and medium-sized enterprises.

Membership of the Madrid System

The total number of member states of the Madrid system (governed by the Madrid Agreement (1891) and the Madrid Protocol (1989)) remains 84. After the ratification of the Madrid Protocol by Egypt, and the accession to the Protocol by Liberia and Sudan, the number of contracting parties of the Protocol has risen to 81.  This means that now only three countries are bound by the Madrid Agreement only.  An expanding membership and an ever wider geographical spread of the system make it a more attractive option for businesses operating in international markets.

Of the total number of international applications filed in 2009, 35.7% were transmitted to WIPO electronically;  the transmitting trademark offices were those of Australia, Benelux, EU, Republic of Korea, Switzerland and the USA.

Background

The WIPO-administered Madrid System for the International Registration of Marks offers a trademark owner the possibility of having a mark protected in up to 84 countries by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs).  Applicants wishing to use the Madrid system must apply for trademark protection in a relevant national or regional trademark office before seeking international protection. An international registration under the Madrid system produces the same effects as an application for registration of the mark in each of the contracting parties designated by the applicant.  If protection is not refused by the trademark office of a designated contracting party, the status of the mark is the same as if it had been registered by that office.  Thereafter, the international registration can be maintained and renewed through a single procedure.  Thus, the system provides a cost-effective and efficient way for trademark holders to secure and maintain protection for their marks in multiple countries.

The first international trademark registration dates from 1893 and belonged at that time to Swiss chocolate producer Russ Suchard et Cie, but is no longer in effect.  The oldest international trademark registration which is still in effect as a result of multiple renewals, belongs to Swiss watchmaker Longines. This trademark was also first registered in 1893.   The international register is located at WIPO’s Geneva headquarters.

Trademarks are a key component of any successful business marketing strategy as they allow companies to identify, promote and license their goods or services in the marketplace and to distinguish them from those of their competitors, and cement customer loyalty. A trademark symbolizes the promise of a quality product and in today’s global and increasingly electronic marketplace, a trademark is often the only way for customers to identify a company’s products and services. Trademark protection hinders moves to “free ride” on the goodwill of a company by using similar distinctive signs to market inferior or similar products or services. Loss, dilution or infringement of a high-value trademark could prove devastating to a business.



Court of Justice of the European Union

Judgment in Case C-386/08 Brita GmbH v Hauptzollamt Hamburg-Hafen

Products originating in the West Bank do not qualify for preferential customs treatment under the EC-Israel Agreement

The assertion made by the Israeli authorities that products manufactured in the occupied territories qualify for the preferential treatment granted for Israeli goods is not binding upon the customs authorities of the European Union.

The European Community concluded two Euro-Mediterranean Association Agreements with Israel (1) and with the Palestinian Liberation Organisation (2) acting for the benefit of the Palestinian Authority of the West Bank and the Gaza Strip. Those agreements provide inter alia that the importation into the European Union of industrial products originating in Israel or the Palestinian territories is to be exempt from customs duties and that the competent authorities of the parties are to cooperate with a view to determining the precise origin of the products receiving preferential treatment.

Brita is a German company which imports drink-makers for sparkling water, as well as accessories and syrups, all of which are produced by an Israeli supplier, Soda-Club Ltd, at a manufacturing site at Mishor Adumin in the West Bank, to the east of Jerusalem. Brita sought to import goods supplied by Soda-Club into Germany. It informed the German customs authorities that the goods originated in Israel and, on that basis, it hoped to be granted the preferential treatment provided for under the EC-Israel Agreement. Suspecting that the products originated in the occupied territories, the German authorities asked the Israeli customs authorities to confirm that the products had not been manufactured in those territories. Although the Israeli authorities confirmed that the goods in question originated in an area that is under their responsibility, they did not reply to the question whether the goods had been manufactured in the occupied territories. For that reason, the German authorities refused in the end to grant Brita the preferential treatment, on the ground that it could not be established conclusively that the imported goods fell within the scope of the EC-Israel Agreement.

Brita contested that decision before the courts and the Finanzgericht Hamburg (Finance Court, Hamburg) asked the Court of Justice whether the preferential treatment provided for under the EC-Israel Agreement may be granted in respect of goods which have been manufactured in the occupied Palestinian territories and which the Israeli authorities have confirmed as being of Israeli origin.

In the judgment, the Court holds that each of the two association agreements has its own territorial scope: the EC-Israel Agreement applies to the territory of the State of Israel, whereas the EC-PLO Agreement applies to the territory of the West Bank and the Gaza Strip. The Court points out that, under general international law, an obligation cannot be imposed upon a third party – such as the Palestinian Authority of the West Bank and the Gaza Strip – without its consent. As a consequence, the EC-Israel Agreement may not be interpreted in such a way as to compel the Palestinian Authorities to waive their right to exercise the competence conferred upon them by virtue of the EC-PLO Agreement and, in particular, to refrain from exercising the right to issue customs documents providing proof of origin for goods manufactured in the West Bank and the Gaza Strip. In those circumstances, the Court holds that products originating in the West Bank do not fall within the territorial scope of the EC-Israel Agreement and do not therefore qualify for preferential treatment under that agreement. It follows that the German customs authorities could refuse to grant, in respect of the goods at issue, preferential treatment as provided for in that agreement, on the ground that those goods originated in the West Bank.

The Court also rejects the argument that preferential treatment ought, in any event, to be granted to Israeli manufacturers based in the occupied territories, whether under the EC-Israel Agreement or under the EC-PLO Agreement. The Court states that goods certified by the Israeli authorities as originating in Israel can receive preferential treatment only under the EC-Israel Agreement, and provided that they have been manufactured in Israel. As regards the assertion made by the Israeli authorities that the goods in question originated in Israel, the Court points out that the origin of products is determined by the authorities of the exporting State. In fact, the authorities of the exporting State are those best placed to verify directly the facts which determine origin. Accordingly, in cases of subsequent verification by the customs authorities of the exporting State, the customs authorities of the importing State are generally bound by the results of that verification.

However, in the present case, the subsequent verification did not concern the question whether the imported products were wholly obtained in a certain location or whether they had undergone sufficient working and processing there for them to be considered to be products originating in that location. The aim of the subsequent verification was to establish the precise place of manufacture of the imported products, for the purposes of determining whether those products fell within the territorial scope of the EC-Israel Agreement. The European Union takes the view that products obtained in locations which have been placed under Israeli administration since 1967 do not qualify for the preferential treatment provided for under that agreement. As it is, despite a specific request from the German authorities, the Israeli authorities did not reply to the question whether the products had been manufactured in Israeli-occupied settlements in Palestinian territory. The Court notes in this respect that, under the EC-Israel Agreement, the Israeli authorities are obliged to provide sufficient information to enable the real origin of products to be determined. Given that the Israeli authorities failed to fulfil that obligation, the assertion made by those authorities that the products at issue qualify for the preferential treatment reserved for Israeli goods is not binding upon the German customs authorities.

(1) Euro-Mediterranean Agreement establishing an association between the European Communities and their Member States, of the one part, and the State of Israel, of the other part, signed in Brussels on 20 November 1995 (OJ 2000 L 147, p. 3).
(2) Euro-Mediterranean Interim Association Agreement on trade and cooperation between the European Community, of the one part, and the Palestine Liberation Organisation (PLO) for the benefit of the Palestinian Authority of the West Bank and the Gaza Strip, of the other part, signed in Brussels on 24 February 1997 (OJ 1997 L 187, p. 3).

Source: PRESS RELEASE No 14/10 - Luxembourg, 25 February 2010


Court of Justice of the European Union
PRESS RELEASE No 07/10
Luxembourg, 21 January 2010

Judgment in Case C-546/07 Commission v Germany

Germany has infringed Community law by restricting to its own undertakings alone the possibility of entering into contracts with Polish undertakings in respect of work to be carried out within its territory
Such a restriction is discriminatory and cannot be justified

In order to address serious disturbances on its labour market, Germany may, in accordance with the 2003 Act of Accession1, after notifying the Commission, limit, in the context of the provision of services, the movement of workers posted by companies established in Poland. This restriction may be maintained so long as Germany applies national measures or measures resulting from bilateral agreements to the free movement of Polish workers. However, the application of such a restriction may not result in conditions for the temporary movement of workers, in the context of the transnational provision of services between Germany and Poland, which are more restrictive than those in force on the date on which the Treaty of Accession was signed (‘standstill’ clause).

Under the 1990 German-Polish Agreement2, work permits are, in principle, to be issued to Polish workers who are detached for temporary employment on a works contract between a Polish employer and an undertaking ‘from the other side’ (contractual workers) regardless of the situation and trends of the labour market.
Pursuant to instructions adopted by the German Federal Employment Agency concerning employment of foreign workers from the new Member States of the European Union, works contracts authorising the recruitment of foreign workers may not be entered into where the work is to be carried out in districts in which the average unemployment rate for the previous six months has been at least 30% higher than the unemployment rate for Germany as a whole. The list of the districts to which that prohibition applies is updated every quarter.

The Commission takes the view that, by preventing undertakings from Member States other than Germany which wish to carry out work in Germany from concluding contracts with a Polish contractor, unless the undertakings from those other Member States establish a subsidiary in Germany, the latter Member State has failed to fulfil its obligations in respect of the freedom to provide services. In its action for failure to fulfil obligations, the Commission, supported by Poland, also alleges that Germany has infringed the ‘standstill’ clause laid down in the 2003 Treaty of Accession by extending the regional restrictions on access to the labour market.
The restriction on the conclusion of works contracts

The Court first points out that the freedom to provide services implies, in particular, the abolition of any discrimination against a service provider by reason of its nationality or the fact that it is established in a Member State other than that in which the service is to be provided.

1 Act concerning the conditions of accession of the Czech Republic, the Republic of Estonia, the Republic of Cyprus, the Republic of Latvia, the Republic of Lithuania, the Republic of Hungary, the Republic of Malta, the Republic of Poland, the Republic of Slovenia and the Slovak Republic and the adjustments to the Treaties on which the European Union is founded (OJ 2003 L 236, p. 33).

2 Agreement of 31 January 1990 between the Government of the Federal Republic of Germany and the Government of the Republic of Poland on the posting of workers from Polish undertakings to carry out works contracts, as amended on 1 March and 30 April 1993 (BGBl. 1993 II, p. 1125).
Consequently, the requirement that an undertaking must set up a permanent establishment or branch in the Member State in which the service is provided runs directly counter to the freedom to provide services as it renders impossible the provision of services, in that Member State, by undertakings established in other Member States.

Next, the Court finds that, by interpreting the term ‘undertaking from the other side’ in the German-Polish Agreement as referring only to German undertakings, Germany creates direct discrimination, contrary to the EC Treaty, against service providers established in Member States other than Germany which wish to enter into a works contract with a Polish undertaking and thereby benefit, through providing services in Germany, from the quota for Polish workers guaranteed under that agreement.

The Court notes that, since the accession of Poland to the Union, the German-Polish Agreement concerns two Member States, with the result that the provisions of that agreement can apply to relations between those Member States only in compliance with Community law, in particular with the Treaty rules on the free provision of services.

The Court points out that discriminatory rules may be justified on grounds of public policy, public security or public health. Recourse to such justification, however, presupposes the existence of a genuine and sufficiently serious threat affecting one of the fundamental interests of society.
By arguing in particular that it is necessary to ensure efficient monitoring of the proper application of the German-Polish Agreement, Germany has failed to adduce any convincing argument capable of justifying restrictions on a fundamental freedom.

The ‘standstill’ clause

The Court finds that the fact that, after the date of signature of the Treaty of Accession, new districts3 were added to the list of those in which works contracts under the German-Polish Agreement are not authorised does not amount to contravention of the ‘standstill’ clause.

More restrictive conditions are not created in the case where the reduction in the number of Polish workers liable to be posted in the context of the provision of services in Germany is simply the consequence of the application, after that date, of a clause, the terms of which have remained identical, to a factual situation which has developed within the labour market. Consequently, the list – updated every quarter – of districts which are subject to the prohibition is, in that context, purely declaratory, since there has not been any deterioration in the legal situation or any unfavourable change in German administrative practice.
The Court observes that this interpretation is confirmed by the purpose of such ‘standstill’ clauses, which is generally to prohibit the introduction of any new measure by a Member State having the purpose or effect of creating more restrictive conditions than those which applied before the date from which those clauses take effect.

NOTE: An action for failure to fulfil obligations directed against a Member State which has failed to comply with its obligations under European Union law may be brought by the Commission or by another Member State. If the Court of Justice finds that there has been a failure to fulfil obligations, the Member State concerned must comply with the Court’s judgment without delay.

Where the Commission considers that the Member State has not complied with the judgment, it may bring a further action seeking financial penalties. However, if measures transposing a directive have not been notified to the Commission, the Court of Justice can, on a proposal from the Commission, impose penalties at the stage of the initial judgment.

3 These are, inter alia, Bremerhaven, Bochum, Dortmund, Duisburg, Essen, Wuppertal, Dresden, Cologne, Oberhausen and Recklinghausen.


 
Judgment of the European Court of Justice of 14 January 2010 in Case C-304/08 

Allowing customers to take part in a lottery free of charge following a certain number of purchases does not automatically constitute an unfair commercial practice
National law may not prohibit such a promotional campaign without taking into account the specific circumstances of individual cases

The European Unfair Commercial Practices Directive 2005/29/EC of the European Parliament and of the Council of 11 May 2005 concerning unfair business-to-consumer commercial practices in the internal market and amending Council Directive 84/450/EEC, Directives 97/7/EC, 98/27/EC and 2002/65/EC of the European Parliament and of the Council and Regulation (EC) No 2006/2004 of the European Parliament and of the Council (OJ 2005 L 149, p. 22) is intended to contribute to the proper functioning of the internal market and to achieve a high level of consumer protection. It establishes a general prohibition of unfair commercial practices that are likely to distort consumers’ economic behaviour. It also lays down rules on misleading and aggressive commercial practices. Furthermore, Annex I to the Directive contains a list of commercial practices which are unfair in all circumstances.

A German retailer launched the promotional campaign ‘Ihre Millionenchance’ (‘Your chance to win millions’) in which the public was invited to purchase goods sold in its shops in order to collect points. By collecting 20 points, customers could take part free of charge in certain draws held by the Deutscher Lottoblock (national association of 16 lottery undertakings). The German association founded to combat unfair competition considered that practice to be unfair within the terms of the German Law on unfair competition (the UWG), which lays down a general prohibition of combining a prize competition and lottery with the obligation to purchase goods. On application by the association, the retailer was ordered at first and second instances to discontinue that practice. The German Bundesgerichtshof (Federal Court of Justice), which must decide on this case at final instance, is asking the Court of Justice whether the Directive precludes a prohibition such as that laid down by the UWG.

In its judgment the Court holds that the Directive precludes national legislation, such as that contained in the UWG, which, without taking account of the specific circumstances of individual cases, provides for a prohibition in principle of commercial practices under which the participation of consumers in a prize competition or lottery is made conditional on the purchase of goods or the use of services.

As a preliminary point, the Court observes that promotional campaigns which enable consumers to take part free of charge in a lottery subject to their purchasing a certain quantity of goods or services constitute commercial acts which clearly form part of an operator’s commercial strategy and relate directly to the promotion thereof and to its sales development. It follows that they do indeed constitute commercial practices within the meaning of the Directive and, consequently, come within its scope.

The Court goes on to point out that the Directive fully harmonises at Community level the rules relating to unfair business to-consumer commercial practices. Accordingly, as the Directive expressly provides, Member States may not adopt stricter rules than those provided for in that directive, even in order to achieve a higher level of consumer protection.

With regard to the practice at issue in the present case, the Court notes that it is not listed in Annex I to the Directive, which exhaustively lists the only commercial practices which can be prohibited without a case-by-case assessment. Accordingly, that practice cannot be prohibited without an assessment, having regard to the facts of each particular case, as to whether it is ‘unfair’ in the light of the criteria set out in the Directive. Those criteria include the question whether the practice materially distorts, or is likely materially to distort, the economic behaviour of the average consumer with regard to the product concerned.

Source: Pressrelease of 14 January 2010

 

The registration of the trade mark ‘CANNABIS’ for beverages potentially containing hemp is not permitted
Court of First Instance of the European Communities
PRESS RELEASE No 103/09
Luxembourg, 19 November 2009

Judgment in Case T-234/06 of  Giampietro Torresan v OHIM

The trade mark is purely descriptive of the fact that the average consumer who is reasonably circumspect may think that it constitutes a description of the characteristics of the product

In 2003, Mr Giampietro Torresan obtained from OHIM, the Community Trade Marks Office, the registration as a Community trade mark of the word sign CANNABIS in respect of beers, wine and spirits. Following an application filed by Klosterbrauerei Weissenohe GmbH & Co. KG, established in Germany, the mark was declared invalid by OHIM, which found that it was descriptive. It found that the word ‘cannabis’ designated, in everyday language, a textile plant or a narcotic substance and that it was, for the average consumer, a clear and direct indication of the characteristics of the goods for which it had been registered.

Mr Torresan disputes that decision and maintains that the trade mark CANNABIS has distinctive character, given that it is both a common name and a purely fanciful mark and has no connection, even indirect, with beer and beverages in general. As a common name, the word ‘cannabis’ constitutes the scientific name of a flowering plant from which certain drugs are extracted and from which certain therapeutic substances may be obtained. The sign CANNABIS has been present on the Italian market as a trade mark since 1996. It has, since 1999, acquired a high degree of renown as a Community trade mark for beers, wine and spirits. In any event, the word ‘cannabis’ does not constitute the normal way of designating beers or alcoholic beverages.

The Court points out, first, that the word ‘cannabis’, also referred to as ‘hemp’, has three possible meanings, namely:

• a textile plant the common organisation of the market in which is regulated within the Community framework and the production of which is subject to very strict legislation as regards the content of it active ingredient (tetrahydrocannabinol: THC),
• a narcotic which is prohibited by a great number of Member States,
• a substance the therapeutic use of which is under discussion.

The Court also points out that cannabis is used in the food sector in different forms (oils, herbal teas) and in different preparations (teas, pasta, bakery and biscuits, alcoholic or non-alcoholic beverages, etc.), all of which contain a very low concentration of THC and therefore have no psychotropic effects.

The Court also states that the Regulation on the Community Trade Mark prohibits the registration of descriptive signs and indications which may, in trade, designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production and may serve, in normal usage from the point of view of the target public, to designate, either directly or by reference to one of their essential characteristics, the product. Those descriptive signs are incapable of fulfilling the indication-of-origin function which forms an integral part of the trade mark. A mark’s descriptive character must be assessed in relation to the goods for which the mark was registered and in the
light of the presumed perception of an average consumer of those goods, who is reasonably well informed and reasonably observant and circumspect.

The Court therefore establishes whether the average consumer may think, merely on seeing a beverage bearing the trade mark CANNABIS, that that mark describes the characteristics of the goods in question.

First, it states that there is a material link between the sign CANNABIS and certain characteristics of the goods in question as cannabis is used in the manufacture of numerous foodstuffs, including beer and certain beverages. Secondly, the Court states that the word ‘cannabis’ is a Latin scientific term which is well known, is present in a number of European Community languages and has had a lot of media coverage, rendering it comprehensible to the target consumer throughout the Community. Consequently, the average consumer will perceive the trade mark CANNABIS as a description of one of the characteristics of those goods. The Court points out that that characteristic is a determining factor for the consumer when he makes his purchase because he will be attracted by the possibility of obtaining similar sensations to those he obtains from the consumption of cannabis.

On those grounds, the Court dismisses Mr Torresan’s action and upholds OHIM’s decision to declare the registration of the trade mark CANNABIS to be invalid in respect of beverages potentially containing hemp.


WIPO Launches Enhanced Patent Information Service

WIPO has launched an enhanced online patent information service that will improve public access to information on patents filed and granted around the world. WIPO’s PATENTSCOPE®, which currently hosts data on more than 1.6 million international patent applications filed under the Patent Cooperation Treaty (PCT), has been extended to include several collections of national and regional patent information.

In this first phase, WIPO’s PATENTSCOPE® includes the patent data collections of eight patent offices: African Regional Intellectual Property Organization (ARIPO), Cuba, Israel, Republic of Korea, Mexico, Singapore, South Africa and Vietnam. WIPO has been working closely with these patent offices to ensure the data collections are fully searchable.

The expansion of WIPO’s PATENTSCOPE® data collection makes it possible to conduct high-quality, detailed and free-of-charge searches of the patent information of the participating offices. Many of these collections had previously not been digitized and were not easily searchable. This initiative is taking place within the context of WIPO’s commitment to supporting the development of a fully integrated global IP infrastructure and to increasing participation by developing and least developed countries in the benefits of the knowledge economy.

The availability of good quality patent information which contains detailed technical specifications of new technologies is an important step towards narrowing the knowledge gap in technological information. WIPO’s PATENTSCOPE®, which facilitates the search and retrieval of patent information, is designed to enhance access to the wealth of technical information contained in patent documents and thereby to promote the broad dissemination of this knowledge. Patent information is of significant practical value to businesses when planning product development, marketing strategies or when seeking partnership opportunities for joint ventures.
In addition to technical information, patent documents offer an indication of who is active in a given field of technology and the legal status of the patents granted to those actors. This information can also be of value to researchers and others seeking information on state-of-the-art technologies, particularly in developing countries, as it can help optimize R&D investment by reducing the chances of unnecessarily duplicating R&D efforts.

WIPO’s expanded PATENTSCOPE® platform offers tools that enable a high-level analysis of technology trends, as well as country and company-level patenting trends. The new service is the result of cooperation agreements between WIPO and the participating national and regional patent offices. WIPO provides technical assistance to offices to assist them in the digitization and dissemination of their patent data. Similar agreements are underway with several additional offices, and others will be added over time

International Applications (PCT)
This search tool allows you to search around 1.6 million published International Patent Applications and to view the latest information and documents available to the International Bureau. This facility features: full-text search in Descriptions and Claims; search using unlimited keywords; bibliographic search; Boolean operators; and graphical results.

National & PCT Collections
This new search tool, now available for public testing, allows you not only to search the PCT database of about 1.6 million International Applications but also the patent collections of ARIPO, Cuba, Israel, Korea, Mexico, Singapore, South Africa and Vietnam. This search facility features: flexible search syntax; automatic word stemming and relevance ranking; as well as graphical results.

External Databases
Links to the searchable patent databases of over 25 National Offices are provided..

Patent Analysis
This patent analysis page features a service providing, through technology reports as well as pre-defined searches of the latest published PCT international patent applications, a quick visualization of developments in selected technologies. The technologies have been selected on the basis of public interest or relevance to prominent areas of public policy.

Glossary
This Glossary is intended as a user friendly tool for searchers to understand the terminology used when searching the PATENTSCOPE® database, and most terms are explained in that context. For complete information and legal definitions please refer to the indicated Standards, Sections, Articles, Rules, and Regulations under the PCT and WIPO.

Source: WIPO press release of 13 November 2009  WIPO - link


No likelihood of  confusion between the marks SpagO and SPA

The European Court of First Instance (Eighth Chamber) decided by judgment of 12 November 2009 in case T-438/07 that the application for a community word mark SpagO did not damage the reputation of an earlier national mark SPA and was consequently not confusingly similar, because the marks are only slightly similar.

The Court noted that it is necessary to take account of the nature of the goods in question and that it is possible as result of the alcohol content of the beverages to distinguish them from water and non‑alcoholic drinks having different characteristics. Whereas alcoholic drinks are usually consumed on special and convivial occasions, water and non-alcoholic drinks are consumed on a daily basis. Moreover, the consumption of water satisfies a vital need. The average consumer, deemed to be reasonably well informed and reasonably observant and circumspect, is aware of that distinction between alcoholic and non‑alcoholic drinks, which is, moreover, necessary, since some consumers do not wish to or cannot consume alcohol. Furthermore, the price of alcoholic drinks is generally much higher than that of non‑alcoholic drinks and the marketing of alcohol is, in a number of respects, more regulated, it being necessary, inter alia, to obtain a licence to sell alcohol and a minimum age restriction being imposed for the purchase of alcoholic drinks. The fact that the drinks at issue may be consumed in the same places and in a complementary fashion, in that they can be mixed or served together, and that they are often consumed by the same people and sold at similar points of sale does not affect this finding.

Iin the light of the difference in the nature of the goods covered by the marks at issue, the element ‘spa’ in the trade mark applied for – Spago – will not be perceived by the average consumer in the Benelux countries as referring to the mineral waters marketed under the earlier mark. The mark applied for  is not SPA GO or SPA‑GO but SpagO  as a single word, namely a neologism in which the element ‘spa’ is lost in the overall impression created by the younger application.


JUDGMENT OF THE COURT OF FIRST INSTANCE (Fifth Chamber)
29 October 2009 

Likelihood of Confusing similarity between word/figurative mark Agile and word mark Aygill’s

In Case T‑386/07 the European Court of First Instance (Fifth Chamber) decided on 29 October 2009 that likelihood of confusion between the aforementioned signs were visually and phonetically similar. OHIM denied incorrectly a likelihood of confusion because of  the manner in which the goods in question are marketed, the visual aspect of the marks was decisive and to find that there was only a low degree of vvisual similarity between the signs and that there is no likelihood of confusion in territories, where the word ‘agile’ has a conceptual content.

The Court held that it is not certain that the visual aspect plays a greater role, since the goods in question are marketed in such a way that, when making their purchase, the relevant public’s perception of the mark designating those goods is visual. In that regard, it should be noted that the goods in question in the case are not all of the same nature as those in question in the case-law cited by the Board of Appeals, namely Case T-57/03 SPAG v OHIM – Dann and Backer (HOOLIGAN) [2005] ECR II-287, and Case T-194/03 Ponte Finanziaria v OHIM – Marine Enterprise Projects (BAINBRIDGE) [2006] ECR II-445). Therefore the Board of Appeal was wrong to describe the visual similarity between the signs at issue as being of a low degree.

Although the signs were globally similar only to a low degree, the Board of Appeal was still wrong to exclude a likelihood of confusion on the part of the relevant public, between the two marks, because  the identity of  goods set off  a low degree of similarity between the conflicting signs.

Comparing the two signs, the Court held that according to established case-law, two trade marks are similar when, from the point of view of the relevant public, there is an at least partial correspondence between them with regard to one or more relevant aspects. With regard to the visual comparison of the signs at issue, the Court held noted that the first four letters of the mark applied for, namely ‘a’, ‘g’, ‘i’ and ‘l’ are included in that order amongst the first five letters of the earlier mark, namely ‘a’, ‘y’, ‘g’, ‘i’ and ‘l’. Furthermore the mark applied for has only five letters and that the earlier mark has only seven and that they have in common a majority of the letters of which they are constituted. It can be deduced from those elements that the consumer will perceive the signs at issue as being visually similar despite their different ending, namely the letter ‘e’ for the mark applied for and the letter ‘l’ followed by an apostrophe and the letter ‘s’ for the earlier mark. In that regard the Court recalled that according to established case-law the consumer generally pays greater attention to the beginning of a mark than to the end.

The difference owing to the fact that the letter ‘y’ is present only in the earlier mark, is not sufficiently significant to put that similarity in question. Perception of that difference by the average consumer would require a detailed comparison of the signs at issue. However, that consumer is deemed only rarely to have a chance to make a direct comparison between the different marks, and must place his trust in the imperfect picture of them that he has kept in his mind.

Furthermore, the Court held wrong to take into account the particular font used by the mark applied for in its comparison of the signs at issue. It was therefore correct to note, since the earlier mark is a word mark, its proprietor has the right to use it in different scripts, such as, for example, a form comparable to that used by the mark applied for. It was therefor incorrect to conclude that there was only a low degree of similarity instead of an average degree of visual similarity between both signs.

Regarding the phonetic comparison of the signs the Board of Appeal found that they were similar in French, but different in English applying the phonetic rules of both languages to the earlier mark. As far as  the average French-speaking consumer is likely to associate the use of the apostrophe followed by the letter ‘s’ in the earlier mark with the English language, it cannot be deducted that the French-speaking would be able to pronounce the earlier mark in accordance with the rules of English pronunciation. Therefore it was correct to compare the two marks at issue by applying the rules of French pronunciation to both of them, and was able to deduct the existence of a phonetic similarity.

Regarding the conceptual comparison of the signs the Board of Appeal held that there was no similarity between them. The Board was correct to point out, that the word ‘agile’ has a clear meaning in several Community languages, including French, in which it means ‘physically or mentally quick’, whereas the same consumer would see in the earlier mark, which is entirely devoid of meaning, reference either to a family name or a place name. It necessarily follows that the signs at issue are conceptually different, but conceptually different, even if  conceptual differences can in certain circumstances counteract the visual and phonetic similarities. Such counteraction, at least one of the signs at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately. The Court held that the conceptual difference between the signs at issue is not, in the circumstances of the present case, such as to neutralise the similarities found to exist.

Whereas the goods at issue were sports equipment and clothing and whereas the word ‘agile’ clearly has a laudatory character with regard to them, either with regard to the characteristics of the goods themselves or to an element connected with the sporting activity for which they are acquired, and therefore have limited distinctiveness in that regard. However, in light of the visual and phonetic similarities between the marks Aygill’s and Agile, it cannot be excluded that consumers of the goods in question might attribute the same conceptual content to the earlier mark as to the mark applied for. Therefore, in the circumstances of the present case, it is apparent that the effect of the conceptual difference between the signs at issue could attenuate the established visual and phonetic similarities, but not neutralise them. It follows that the signs at issue must be considered to be similar overall, but to a low degree with regard at least to the French-speaking public, which, apart from a visual similarity, will also perceive a phonetic similarity between them.


THE COURT OF JUSTICE INTERPRETS THE EUROPEAN CONVENTION ON THE LAW APPLICABLE TO CONTRACTUAL OBLIGATIONS FOR THE FIRST TIME

Court of Justice of the European Communities Press Release No 87/09 Luxembourg, 6 October 2009 - Press and Information to Judgment in Case C-133/08

Intercontainer Interfrigo (ICF) v Balkenende Oosthuizen BV & Mic Operations BV


The Court specifies the criteria according to which the law applicable to a charter-party is determined

In 1998, in the context of a project for a train connection for freight traffic between Amsterdam (Netherlands) and Frankfurt am Main (Germany), the Belgian company Intercontainer Interfrigo (ICF) entered into a charter party with the Netherlands companies Balkenende and Mic Operations BV (MIC). ICF was to make train wagons available to MIC and would ensure their transport via the rail network. MIC, which had hired out the acquired load capacity to third parties, was responsible for all operational aspects of the transport. The draft contract stating that Belgian law was the law applicable to the contract was not signed by any of the parties. In 2002, ICF brought an action against MIC before a Netherlands court seeking payment of an invoice from 1998. The Netherlands court held that the contract should be categorised as a contract for the carriage of goods, that it was more closely connected with the Netherlands than with Belgium and that, consequently, the right to payment of the invoice was time-barred (which was not the case under Belgian law).

The Hoge Raad der Nederlanden (Supreme Court of the Netherlands), before which the case is now pending, referred a number of questions to the Court of Justice relating to the interpretation of the law applicable to contractual obligations 1 and, in particular on the applicable law in the absence of a choice by the parties. The Court points out, first, that the Convention was concluded in order to continue, in the field of private international law, the work of unification of law set in motion by the Convention on jurisdiction and the enforcement of judgments 2. It seeks to eliminate the inconveniences arising from the diversity of the conflict-of-law rules applied in the various States in the area of contracts and establish uniform rules concerning the law applicable to contractual obligations, irrespective of where the judgment is to be delivered.

Under the Convention, the parties are free to choose the law applicable to the contract that they are concluding, but, in the absence of a choice, connecting criteria are provided for which apply to all categories of contract and are based on ascertaining the country with which that contract is ‘most closely connected’. That general principle is limited by presumptions (such as the place of residence of the party to the contract who effects the performance characteristic of that contract) or special connecting criteria (for example in respect of contracts for immoveable property or contracts of carriage).

1 Convention on the law applicable to contractual obligations, opened for signature in Rome on 19 June 1980 (OJ 1980 L 266, p. 1).
2 Convention of 27 September 1968 on jurisdiction and the enforcement of judgments in civil and commercial matters (OJ 1972 L 299, p. 32).

More specifically as regards the carriage of goods, the law which applies is that of the country in which the carrier has his principal place of business if the place of loading or the place of discharge or the principal place of business of the consignor is situated in that country. The Court also points out that under the Convention other contracts the main purpose of which is the carriage of goods are also to be treated as contracts for the carriage of goods, but, in such circumstances, the law of the country in which the carrier has his principal place of business applies only when the owner/carrier has his principal place of business, at the time the contract is concluded, in the country in which the place of loading or the place of discharge or the principal place of business of the consignor is situated. The Court thus declares that the law of the country in which the carrier has his principal place of business applies to a charter-party only when the main purpose of the contract is not merely to make available a means of transport, but the actual carriage of goods. The court must always determine the applicable law on the basis of the presumptions provided by the Convention, but where it is clear from the circumstances as a whole that the contract is more closely connected with a country other than that determined on the basis of the presumptions, the court may disregard them and apply the law of the country with which the contract is most closely connected.

The Court points out that under the Convention 1 the law applicable to a contract governs in particular the prescription of obligations. Lastly, it holds that – for the purposes of determining the law applicable – the court may separate a contract into a number of parts; a part of a contract may, by way of exception, be governed by a law other than that which applies to the rest of the contract, but only where the object of that part is independent.

COURT OF JUSTICE OF THE EUROPEAN COMMUNITIES

Press and Information
PRESS RELEASE No 75/09

22 September 2009

Advocate General’s Opinion in Joined Cases C-236/08, C-237/08 and C-238/08

Google France & Google Inc. v Louis Vuitton Malletier, Google France v Viaticum & Luteciel and Google France v CNRRH, Pierre-Alexis Thonet, Bruno Raboin & Tiger, franchisée Unicis

ADVOCATE GENERAL POIARES MADURO CONSIDERS THAT GOOGLE HAS NOT INFRINGED TRADE MARK RIGHTS BY ALLOWING ADVERTISERS TO BUY KEYWORDS CORRESPONDING TO REGISTERED TRADE MARKS

However, Google's liability may be engaged for featuring content in AdWords that involves trade mark infringement.
Under Community trade mark rules (First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) and Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), the owner of a trade mark can prohibit others from using the sign in advertising.

The E-Commerce Directive (Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’) (OJ 2000 L 178, p. 1) exempts, under certain conditions information society service providers from liability for the information stored at the request of a recipient of the service. (This exemption applies where: (i) there is an information society service; (ii) that service consists in the storage of information, provided by the recipient of the service, at the request of that recipient; and (iii) the provider of the service has no actual knowledge of the illegal nature of the information, or of facts which would make such illegality apparent, and duly acts to remove it upon becoming aware of its illegality.)

Google allows internet users free access to the Google search engine. On entering keywords into that search engine, users are presented with a list of natural results selected and ranked according to their relevance to the keywords, determined by objective criteria. Google also operates an advertising system called 'AdWords', which enables ads to be displayed, alongside natural results, in response to keywords. These ads typically consist of a short commercial message and a link to the advertiser's site; they are differentiated from natural results by their placement and design. Through AdWords, Google allows advertisers, in return for payment, to select keywords so that their ads are displayed to internet users in response to the entry of those keywords in Google’s search engine. Google supports its search engine with its income from AdWords.

In France, legal proceedings have been initiated by trade mark owners against Google as to the legality of the use, in the Adwords advertising system, of keywords corresponding to trade marks. It has been established in those proceedings that entering certain trade marks into Google's search engine triggered the display of ads for sites offering counterfeit versions of the products covered by the trade mark or identical or similar products of competitors.

The Cour de cassation, called upon to settle the issue at last instance, has asked the Court of Justice whether Google has committed a trade mark infringement by making available such keywords to advertisers and if the company can be held liable for the content featured in AdWords.

In his Opinion delivered today, Advocate General Poiares Maduro suggests that Google has not committed a trade mark infringement by allowing advertisers to select, in AdWords, keywords corresponding to trade marks. He highlights that the use of the trade marks is limited to the selection of keywords which is internal to AdWords and concerns only Google and the advertisers. When selecting keywords, there is thus no product or service sold to the general public. Such a use cannot therefore be considered as being a use made in relation to goods or services identical or similar to those covered by the trade marks. Similarly, advertisers themselves do not commit a trade mark infringement by selecting in Adwords keywords corresponding to trade marks.

By contrast, the Advocate General finds that Google, by displaying ads in response to keywords corresponding to trade marks, establishes a link between those keywords and the sites advertised which sell products identical or similar to those covered by the trade marks. The very same link is established between keywords which correspond to trade marks, and the sites displayed as natural results.

However, in the view of the Advocate General, such a link also does not constitute a trade mark infringement. In effect, the mere display of relevant sites in response to keywords is not enough to establish a risk of confusion on the part of consumers as to the origin of goods or services. Internet users are aware that not only the site of the trade mark owner will appear as a result of a search in Google's search engine and sometimes they may not even be looking for that site. These users will only make an assessment as to the origin of the goods or services advertised on the basis of the content of the ad and by visiting the advertised sites; no assessment will be based solely on the fact that the ads are displayed following the entry of keywords corresponding to trade marks.

The Advocate General then recalls that trade mark rights cannot be construed as classical property rights enabling the trade mark owner to exclude any other use. Accordingly, internet users' access to information concerning the trade mark should not be limited to or by the trade mark owner even if it involves a trade mark which has a reputation. He notes that many of the sites reached by internet users by entering keywords are perfectly legitimate and lawful even if they are not the sites of the trade mark owner.

Mr. Poiares Maduro also rejects the notion that Google's actual or potential contribution to a trade mark infringement by a third party should constitute an infringement in itself. He opines that instead of being able to prevent, through trade mark protection, any possible use – including many lawful and even desirable uses –, trade mark owners would have to point to specific instances giving rise to Google’s liability in the context of illegal damage to their trade marks.

In this context, the Advocate General finds that both Google's search engine and AdWords constitute information society services. He adds that service providers seeking to benefit from a liability exemption under the E-Commerce Directive should remain neutral as regards the information they carry or host.

However, whilst the search engine is a neutral information vehicle applying objective criteria in order to generate the most relevant sites to the keywords entered, that is not the case with Adwords where Google has a direct pecuniary interest in internet users clicking on the ads' links.

Accordingly, the liability exemption for hosts provided for in the E-Commerce Directive should not apply to the content featured in AdWords.




PRESS RELEASE No 49/09
4 June 2009
Judgment of the Court of First Instance in Case T-185/07
Calvin Klein Trademark Trust v OHIM

CK CREACIONES KENNYA  unsimilar to CK CALVIN KLEIN

The absence of similarity between the conflicting signs precludes a likelihood of confusion on the part of consumers
In October 2003, the Spanish company Zafra Marroquineros, SL, filed an application for registration of the mark CK CREACIONES KENNYA at the Office for Harmonisation in the Internal Market (OHIM). Calvin Klein Trademark Trust filed a notice of opposition to registration of the mark in question on the ground that there was a likelihood that consumers would confuse it with its own trade mark.
OHIM dismissed the opposition and found that there were sufficient differences between the conflicting signs to preclude a likelihood of confusion on the part of the relevant public.
First of all, the Court points out that under the Community trade mark Regulation, upon opposition by the proprietor of an earlier trade mark, a trade mark must 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. The more distinctive the earlier mark, the greater will be the likelihood of confusion. In the present case, it is not disputed that the goods at issue – inter alia clothing, footwear, trunks and travelling bags – are identical.
Secondly, the Court analyses the similarity of the signs in order to assess whether there is a likelihood of confusion. It finds that the figurative signs covered by the earlier registrations consist of the group of letters ‘ck’, written in upper case printed characters and also contain the words ‘calvin klein’. As for the mark applied for, it is a word mark consisting of three elements, namely the group of letters ‘ck’ followed by the words ‘creaciones’ and ‘kennya’. The Court takes the view that, because of their size, the words ‘creaciones kennya’ occupy a much more significant position than the group of letters ‘ck’ and form a syntactical and conceptual unit which dominates the whole of the mark applied for. Furthermore, the element ‘ck’ corresponds to the initial letters of the words ‘creaciones’ and ‘kennya’, thus establishing the origin of that element and explaining its presence. Owing to the way in which it is presented, that element occupies an ancillary position in relation to the element ‘creaciones kennya’.
The mark applied is dominated visually by the element ‘creaciones kennya’. The mere visual resemblance of the sole or dominant figurative element ‘ck’ in the earlier marks and the element ‘ck’ in the mark applied for does not serve to create a visual similarity between the marks at issue.
The marks are not similar phonetically since the earlier mark will be referred to by means of the group of letters ‘ck’ whereas only the words ‘creaciones kennya’ alone or the whole of the expression ‘ck creaciones kennya’ will be used to refer to the mark applied for.
Conceptually, the group of letters ‘ck’ in the mark applied for derives from the words ‘creaciones kennya’ but as regards the earlier mark that group of letters constitutes a reference to the manufacturer and designer of fashion items Calvin Klein.
The Court takes the view that the visual, phonetic and conceptual examination of the marks shows that the overall impression created by the earlier marks is dominated by the element ‘ck’ whereas that created by the trade mark applied for is dominated by the element ‘creaciones kennya’.
The Court holds that there is no similarity between the conflicting signs and that there is no likelihood of confusion between the marks at issue. Accordingly, it dismisses the action brought by Calvin Klein.


COURT OF JUSTICE OF THE EUROPEAN COMMUNITIES
PRESS RELEASE No 35/09
23 April 2009
Judgment of the Court of Justice in Case C-59/08
Copad SA v Christian Dior couture SA, Société industrielle lingerie (SIL)

THE PROPRIETOR OF A TRADE MARK CAN OPPOSE THE RESALE OF HIS LUXURY GOODS BY DISCOUNT STORES

This is particularly the case where the discount store received the goods from a licensee in contravention of a licence agreement and where that contravention damages the allure and prestigious image which bestows on them an aura of luxury
In 2000, Dior concluded a trade mark licence agreement with Société industrielle lingerie (SIL) in respect of the manufacture and distribution of luxury corsetry goods bearing the Christian Dior trade mark. That agreement states that in order to maintain the repute and prestige of the Dior trade mark SIL agrees not to sell, in particular, to discount stores outside the selective distribution network, without written agreement from Dior, and that the licensee must make all necessary provision to ensure that that rule is complied with by its distributors or retailers.
However, since it was faced with economic difficulties, SIL sold goods bearing the Dior trade mark to Copad, a company operating a discount store business. Taking the view that that resale was prohibited by the agreement, Dior brought an action against SIL and Copad for trade-mark infringement. However, the resellers pleaded exhaustion of Dior’s trade mark rights, because the goods had been put on the market in the EEA (European Economic Area) with Dior’s consent.
The French Cour de Cassation, as the court of last instance, referred questions to the Court of Justice concerning the interpretation of the Trade Mark Directive1 particularly since the licensee disregarded a provision in the licence agreement prohibiting, on grounds of the trade mark’s prestige, sale to discount stores outside the selective distribution network.
The Court holds, first, that the proprietor of a trade mark can invoke the rights conferred by that trade mark against a licensee who contravenes a provision in a licence agreement prohibiting, on grounds of the trade mark’s prestige, sales to discount stores, provided it has been established that that contravention, by reason of the situation prevailing in the case, damages the allure and prestigious image which bestows on those goods an aura of luxury.
1 Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), as amended by the Agreement on the European Economic Area of 2 May 1992 (OJ 1994 L 1, p. 3)
The directive entitles the proprietor of a trade mark to invoke the rights that the trade mark confers on him in respect of a licensee where the licensee contravenes certain provisions in the licence agreement listed in Article 8(2) of the directive, including in particular those concerning the quality of the goods. The quality of luxury goods is not only the result of their material characteristics, but also of the allure and prestigious image which bestows on them an aura of luxury. In this respect, a selective distribution system such as that at issue, which seeks to ensure that the goods are displayed in sales outlets in a manner that enhances their value, especially as regards positioning, advertising, packaging as well as business policy, contributes to the reputation of the goods at issue and therefore to sustaining the aura of luxury surrounding them.
Consequently, it is conceivable that the sale of luxury goods by the licensee to third parties outside the selective distribution network might affect the quality itself of those goods, so that, in such circumstances, a contractual provision prohibiting such sale must be considered to be falling within the scope of the trade mark directive. It is for the national court to examine whether, taking into account the circumstances of the case before it, contravention by the licensee of a provision such as the one at issue in the main proceedings damages the aura of luxury of the luxury goods, thus affecting their quality.
Next, the Court holds that a sale that takes place in disregard of a provision prohibiting resale to discount stores outside the selective distribution network may, for the purposes of the directive, be considered to have taken place without the consent of the proprietor of the trade mark where it is established that such a breach contravenes one of the provisions listed in the directive.
Even though, as a general rule, it must be considered that goods bearing the trade mark are put on the market by a licensee with the consent of the proprietor of the trade mark, the fact remains that a licence agreement does not constitute the absolute and unconditional consent of the proprietor of the trade mark to the licensee putting the marked goods on the market.
The directive expressly enables the proprietor of the mark to invoke the rights the trade mark confers on him against a licensee where the latter contravenes certain provisions in the licence agreement.
Therefore, the directive must be interpreted as meaning that where a licensee puts goods on the market in disregard of a provision in a licence agreement, this precludes exhaustion of the rights conferred by the trade mark on its proprietor for the purposes of the directive if it can be established that that provision is included in those listed in Article 8(2) of the directive.
Finally, the Court holds that damage done to the reputation of a trade mark may, in principle, be a legitimate reason, within the meaning of the directive, allowing the proprietor to oppose the use of his trade mark for further marketing of luxury goods put on the market in the EEA by him or with his consent.



Figurative Word and Device Marks with identical word not confusingly similar

By judgement of the Court of First Instance in Luxembourg of 18 December 2008  - Case T‑287/06 - the court confirmed that under Article 8(1)(b) of Regulation No 40/94, a  trade mark cannot 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 two trade marks, a likelihood of confusion on the part of the public does exist in the territory of the earlier protected trade mark. According to established case-law, the risk that the relevant public might believe that the goods or services covered by the marks come from the same undertaking or  from economically-linked undertakings, constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally on the basis of the perception that the relevant public has of the signs and the goods or services in question and taking into account all factors relevant to the circumstances of the case ([Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819 and Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821]). That global assessment takes account, in particular, of awareness of the mark on the market, and of the degree of similarity between the marks and between the goods or services covered. In that respect, it implies some interdependence between the factors taken into account, so that a low degree of similarity between the goods or services covered may be offset by a high degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I‑5507 and Lloyd Schuhfabrik Meyer). Further, the perception of the marks in the mind of the average consumer of the goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. For the purposes of that global assessment, the average consumer of the goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. Account should also be taken of the fact that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (Lloyd Schuhfabrik Meyer). In the present case, the relevant public comprised the average consumers of the Member States in which the earlier sign is protected. It is clear from the case-law that the global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components (see judgment of 11 July 2006 in Case T‑247/03 Torres v OHIM – Bodegas Muga (Torre Muga), and case-law cited). Further, according to established case-law, a compound trade mark cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the compound mark, unless that component forms the dominant element within the overall impression created by the compound mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it. .

However, that approach does not amount to taking into consideration only one component of a complex trade mark and comparing it with another mark. On the contrary, such a comparison must be made by examining the marks in question, each considered as a whole. In the present case, the earlier mark consists of the word ‘torres’, written in capital letters and positioned above a coat of arms on which are represented three towers, whereas the mark applied for consists of the representation of one tower under which appears the phrase ‘torre albéniz’, written in italics and in a particular letter font. For the purposes of comparison of the signs at issue, the applicant has put forward various arguments designed to establish that the word ‘torre’ constitutes the dominant element in the mark applied for. In light of the relevance of that factor to the assessment of the signs’ similarity, those arguments must be examined before a comparison of the signs at issue is undertaken. In relation to the effect which recognition of the fact that the TORRES sign is well known might have on identification of the dominant element in the mark applied for and, consequently, on the similarity of the marks at issue, the fact that an earlier mark is well known may strengthen the distinctiveness of the identical or similar element in a compound mark with the result that such element becomes the dominant element.

However, that does not apply in the present case, because in view of the applicant’s claim tha  the earlier TORRES marks being well known throughout the European Union and  the word ‘torre’ being placed in younger mark, the relevant consumer will pay particular attention to that word and disregard the other components of the younger  mark,  it must be stated that, while, in order to assess the dominant character of one or more components of a complex trade mark, account may, accessorily, be taken of the relative position of the various components within the arrangement of such a mark (Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335), the relative position does not in all circumstances make one element of a mark dominant while removing all significance in the overall impression from other elements being components of that mark. In the present case, the fact that the word ‘torre’ is placed first in the mark applied for does not mean that the word placed second, namely ‘albéniz’, is insignificant in the overall impression produced by that mark, in particular phonetically and conceptually. On the contrary, the decisive factor in the distinctiveness of the mark applied for is the combination of the words ‘torre’ and ‘albéniz’, which form, together, a unique logical and conceptual unit. Consequently, even if the earlier mark was well known, the existence of the other components of the mark applied for cannot be ignored. There is no basis for the proposition that the average consumer who is reasonably well informed and reasonably observant and circumspect will systematically disregard the second part of the word element of a mark to the point of remembering only the first part, as claimed by the applicant. That is more particularly true in the alcoholic beverages sector, where consumers are accustomed to the practice of goods being designated by marks which include several word elements. In the present case, the earlier well known TORRES sign is not identical to the element ‘torre’ in the mark applied for, since that element does not end with the letter ‘s’. Further it must be noted that, first, the word element ‘torre’ in the mark applied for is commonly used to designate the goods concerned and, secondly, that word is combined with the element ‘albéniz’ in such a way that they form together a logical and conceptual unit which has a decisive effect on the capacity of the mark applied for to distinguish the goods which it designates. Given those factors, it cannot be held that the word ‘torre’ renders the other components of the compound mark insignificant in the overall impression produced by the mark, even though that element has some degree of similarity with the highly distinctive TORRES sign.

Regarding the alleged inconsistency between  the Board of Appeal’s finding that the expression contained in the younger mark  forms a unique logical and conceptual unit and the Board’s finding that the word ‘albéniz’ occupies a dominant and distinctive position in the younnger mark  it must be held that the relevant public will perceive the younger  mark as a syntactic unit, irrespective of the understanding of that term. For that part of that public, more particularly Spanish, Portuguese or Italian, which understands the meaning of those words or expression, it is probable that the word ‘torre’ is less important and that the second part of the mark applied for, which introduces a specific feature and evokes a place or a person, is more dominant. In light of the foregoing, it must be held, for the purposes of the comparison of the signs at issue, that the Board of Appeal did not err in law by declining to hold that the word ‘torre’ was the dominant element in the impression produced by the mark applied for.

Visually, while comparison of the signs at issue reveals a coincidence of the first five letters of the single element in the TORRES sign and the element ‘torre’ in the mark applied for, the Board of Appeal was correct to find that the overall visual impression produced by each of the signs at issue was different. First, the element ‘torre’ in the mark applied for is not identical to the TORRES sign, since the latter ends with the letter ‘s’ indicating a plural. Next, while the earlier mark is composed of the word ‘torres’, written in capital letters and positioned above a coat of arms on which are represented three towers, the mark applied for consists of the representation of one tower beneath which appears the expression ‘torre albéniz’, written in italics and in a particular letter font. While it may be considered, as is claimed by the applicant, that in the mark applied for the figurative element is of secondary importance as compared with the word element, which is much more likely to differentiate the designated goods and to attract the consumer’s attention, it is clear that in the mark applied for the word element ‘torre albéniz’ alone is, on any view of the matter, sufficiently distinct from the TORRES sign to ensure that, visually, the differences as perceived by the consumer are greater than the similarities. That conclusion is not affected by the fact, relied on by the applicant, that the public’s attention will focus as least as intensely on the first part of the word element of the mark applied for as on its second part.

Phonetically, the earlier sign consists of a single word, composed of two syllables ‘to’ and ‘rres’, whereas the mark applied for comprises two words representing a total of five syllables, namely ‘to’, ‘rre’, ‘al’, ‘bé’ and ‘niz’. That being the case, the fact that the mark applied for contains almost all of the earlier mark, except for the last letter ‘s’, cannot outweigh the phonetic differences between the signs when each is considered as a whole. It must therefore be held that the Board of Appeal was correct to decide that the signs at issue were, phonetically, clearly different. That assessment cannot be invalidated by the applicant’s other arguments on this point. Even though it cannot be denied that one part of the two marks at issue is clearly similar, it remains the case that that fact is cancelled out by manifest phonetic differences between the two signs, whether in the number of syllables to be pronounced or in the presence of the word ‘albéniz’. The Court must therefore reject the applicant’s argument that the coincidence of the syllables ‘to’ and ‘rre(s)’, allegedly accentuated by their being placed first in the two marks at issue, gives them a greater attractiveness, further enhanced by the fact that the syllables ‘to’ and ‘rre(s)’ are more difficult to pronounce than the other word which is a component of the mark applied for. As stated in paragraph 55 above, the words ‘torre’ and ‘albéniz’ form a unique logical and conceptual unit. No evidence has been produced to support the conclusion that that unit is likely to have significantly less strength when it is pronounced. Further, the applicant has in no way substantiated the argument that the syllables ‘to’ and ‘rre(s)’ are those which are the more difficult, for the relevant consumer, to pronounce, because of the double ‘r’. On that point, it must be stated that words containing a double ‘r’ are found in the majority of the relevant countries and, consequently, it has not been established that pronunciation of that sound is difficult. In addition, pronunciation of the syllable ‘bé’, in the word ‘albéniz’, is clearly stressed and could not go unnoticed in the phonetic whole produced by pronunciation of the mark applied for. The same is true of the last syllable ‘niz’.

Regarding the conceptual similarity a distinction must be made between the impression produced by the signs at issue in countries where consumers know the meaning of the word ‘torre’, namely in Spain, Italy and Portugal, and the impression produced in other countries.  For countries where consumers know the meaning of the word ‘torre’, the Board of Appeal did not err by holding that the ideas suggested by the word ‘torres’ and the expression ‘torre albéniz’ are different. Whereas the word ‘torres’ evokes the idea of towers in the plural the second word of the mark is associated with the famous Spanish musician. While there is some degree of similarity the frequent use of the word ‘torre’ to designate the goods in Spain, Italy and Portugal will cause consumers in those countries not to overlook the element ‘albéniz’ in the mark applied for and, consequently, to be more alert to the conceptual difference between the signs. In countries where the meaning of the word ‘torre’ is unknown the conceptual similarity is of limited relevance. In that regard, the applicant claims that the majority of European consumers do not understand the meaning of the word ‘torre’ and that it is impossible to hold, on the basis of the perception of a minority of the intended public, that there are conceptual differences between the signs at issue. It must however be observed that the fact that the conceptual comparison of the signs at issue is of limited relevance in the majority of European Union countries does not preclude account being taken of the conceptual differences between the signs at issue in countries where the meaning of that word is known by the public.

Therefor it must be held that the Board of Appeal was right to conclude that the differences between the signs at issue prevailed, visually and phonetically, for all the consumers concerned, and, conceptually, for the Spanish, Italian and Portuguese public. It is clear from the comparison of the signs at issue that the overall impression produced by them is different. The mere coincidence of the first five letters of the earlier sign and the element ‘torre’ in the mark applied for does not alter the finding that, in the overall impression, the differences between the signs are greater than the weak points of similarity. In light of the differences between the signs at issue, the Board of Appeal was correct to hold that there was no likelihood of confusion between them, notwithstanding the fact that the goods concerned were identical. When making an overall assessment of the marks at issue, the visual, aural and possible conceptual differences between the signs at issue are sufficient, in spite of the identity of the goods designated and the fact that they belong to the same sector of production and marketing, to preclude the resemblances between the signs at issue from giving rise to a likelihood of confusion in the mind of the average consumer (see, to that effect, Torre Muga and case-law cited). The fact that the TORRES sign is well known in all the relevant countries cannot call in question that conclusion. While there is established case-law that the more distinctive the earlier mark, the greater will be the likelihood of confusion, it must be emphasised that a likelihood of confusion presupposes that the signs are identical or similar. The fact that a mark is well known is one factor which, far from giving rise, in itself, to a likelihood of confusion, 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. In the present case, although the Board of Appeal recognised that the TORRES sign was well known in Spain, or even in the other Member States where it is protected, the comparison of the signs at issue none the less revealed that the overall impression produced by the mark applied for was very different from that produced by the earlier mark. That being the case, the high distinctiveness of the earlier sign resulting from the public’s knowledge of it on the market cannot, by itself, disturb the conclusion that there is no likelihood of confusion.

That conclusion is also not affected by the applicant’s argument referring to the appellation of origin containing the expression ‘torres vedras’, to the effect that the Community legislature more specifically recognised that a name made up of the words ‘torres’ and ‘vedras’ could be confused with the TORRES marks, in spite of the presence of the second word, ‘vedras’, and accordingly inserted Article 23a in Commission Regulation (EEC) No 3201/90 of 16 October 1990 laying down detailed rules for the description and presentation of wines and grape musts (OJ 1990 L 309, p. 1) in order to avoid that possibility. In that regard, the legislation to which the applicant refers deals with provisions relating to quality wines produced in specific regions (‘quality wines p.s.r.’) and provisions on the description and presentation of wines, more particularly labelling. However, while it is true that the Community legislature recognised a possible risk of confusion with a number of well known marks when a new quality wine in the ‘quality wines p.s.r.’ category appears and therefore states how the name of the specific region must be specified on the label, the applicant’s reference to that fact is, all the same, not a serious argument that there was a likelihood of confusion in the present case and that, therefore, a mark applied for containing the word ‘torre’ was not to be registered.

As regards the applicant’s argument that its earlier marks constitute a ‘family of marks’ or a ‘series of marks’, which can increase the likelihood of confusion with the mark applied for, such a possibility was recognised in BAINBRIDGE and confirmed in Case C‑234/06 P Il Ponte Finanziaria [2007] ECR I‑7333. According to that case-law, there can be said to be a ‘series or a ‘family’ of marks when either those earlier marks reproduce in full the same distinctive element with the addition of a graphic or word element differentiating them from one another, or when they are characterised by the repetition of the same prefix or suffix taken from an original mark . In such circumstances, a likelihood of confusion may be created by the possibility of association between the trade mark applied for and the earlier marks forming part of the series where the trade mark applied for displays such similarities to those marks as might lead the consumer to believe that it forms part of that same series and therefore that the goods covered  by it have the same commercial origin as those covered by the earlier marks, or a related origin. Such a likelihood of association between the trade mark applied for and the earlier marks in a series, which could give rise to confusion as to the commercial origin of the goods identified by the signs at issue, may exist even where the comparison between the trade mark applied for and the earlier marks, each taken individually, does not prove the existence of a likelihood of direct confusion. When there is a ‘family’ or a ‘series’ of trade marks, the likelihood of confusion results more specifically from the possibility that the consumer may be mistaken as to the provenance or origin of goods or services covered by the trade mark applied for and considers erroneously that that trade mark is part of that family or series of marks. However according to the cited case-law  likelihood of confusion based on the existence of a family of earlier marks can be pleaded only, if  two conditions are satisfied. The earlier marks forming part of the ‘family’ or ‘series’ must be present on the market  and the younger trade mark must - aside of being similar to the marks belonging to the series - display characteristics capable of associating it with the series. That might not be the case, where the element common to the earlier serial marks is used in the younger trade mark in a different position from that in which it usually appears in the marks belonging to the series or with a different semantic content. In the present case the common element of the earlier word and figurative marks comprises the word ‘torres’ and/or the representation, in various forms, of a three towers. It follows that the constant element in the earlier marks, both in word form and figuratively, is the presence of three  towers. Apart from the word torres and/or the representation of three towers the earlier marks do not show in a particular and unvarying form any characteristics capable of leading the relevant consumer to associate the younger mark  with all of the earlier marks conceived as a ‘family’ or ‘series’ of marks, and to be mistaken as to the provenance or origin of the goods covered by that mark. In fact  in its word form and figuratively the Torre Albéniz sign can be distinguished from the earlier marks by its individuality  and in particular by the distinctive addition of the element ‘albéniz’. Consequently, since the second condition is not satisfied, the applicant’s argument based on a family of earlier marks must be rejected and that it is unnecessary to determine whether the earlier marks are present on the market. It follows that the Board of Appeal was right to hold that it could not be considered that the word ‘torre’ might be perceived by the relevant consumer as being connected with the family of TORRES marks.