E .g. Case R 219/2004-1 has to be entered under 'Appeal Nº' as: 0219/2004-1Article 8(1)(b) CTMR – Likelihood of confusion – Article 8(5) CTMR – Earlier trade mark with reputation. Decision of the Second Board of Appeal of 13 May 2011 in Case R 1084/2010-2 (English).The signs to be compared are: (earlier mark) and (sign applied for). The goods specified for both the earlier trade mark and the contested sign in Class 25, namely ‘clothing, footwear, headgear’ are identical. Visually, the conflicting signs are figurative marks in black and white consisting of four rings in black and grey overlapping each other. However, in the opinion of the Board the number 1009 is clearly perceptible in the contested sign. Even though in the case at hand the mark applied for does not contain verbal elements, but rather a numerical element, the Board is of the opinion that the average consumer will more easily refer to the goods in question by quoting the number 1009 than by describing the figurative element of the rings of the trade mark. Therefore, the signs are not visually similar.
Aurally, as the number 1009 included in the contested mark is clearly perceptible, it is pronounced as the number 1009 or as the numbers 1-0-0-9 in accordance with the pronunciation rules in each Member State. With regard to the earlier sign, as it is a purely figurative mark, it cannot be pronounced. Bearing in mind the foregoing and especially the fact that a purely figurative mark is being compared with a mark that has an element which can be pronounced, the marks are aurally not similar.
Conceptually, the Board finds it rather far-fetched that the earlier sign might suggest, among others, the idea of the symbol of the Olympic Games, as the symbol of the Olympic Games consists of five rings in a rather different layout. In the opinion of the Board, the four rings cannot be seen to relate to any specific concept. On the other hand, the contested mark contains the concept of the number 1009. Therefore, even though both marks contain four rings, the marks are conceptually also not similar overall.
The Board further observed that even though it may be true that the earlier mark enjoys enhanced distinctiveness and reputation in relation to cars and other vehicles, the evidence provided with regard to goods in Class 25 consists mainly of catalogues and of turnover and sales figures which seem to originate from the owner of the mark itself. The Board concluded that the claimed reputation and high level of distinctiveness of the earlier trade mark in Class 25 remains unproven. Therefore, the distinctiveness of the earlier figurative mark must be seen as normal.
In light of the above, based on an overall assessment of the visual, aural and conceptual comparison between the marks, the Board noted that the marks at issue are not similar and that it is highly unlikely that the relevant consumer could confuse the trade marks or believe that the goods applied for come from the same undertaking merely on the basis of the slight elements of similarity. The clearly perceptible differences between the signs would not be overlooked by the relevant customer, even if they were used for identical goods. Therefore, the Opposition Division did not err in considering that Article 8(1)(b) CTMR was not applicable.
The opponent also argued that its earlier mark is famous, however, it did not mark Article 8(5) CTMR as a ground of opposition or the goods and services in relation to which it claims reputation. Nevertheless, the Opposition Division considered that reputation had been claimed, and therefore it took this claim into account.
Due to the clear differences between the signs, the Board is of the opinion that the marks are sufficiently dissimilar so that the degree of similarity is not such that the relevant public would establish a link between the two signs.
Furthermore, it should be noted that the purpose of Article 8(5) CTMR is, notably, to enable the proprietor of an earlier mark with a reputation to oppose the registration of marks which are likely either to be detrimental to the repute or the distinctive character of the earlier mark, or to take unfair advantage of that repute or distinctive character. The Board is of the opinion that it cannot be established, on the basis of logical deductions resulting from an analysis of the probabilities and by taking account of the usual practices in the relevant commercial sector as well as all the other circumstances of the case, that the mark applied for is likely to take unfair advantage or be detrimental to the distinctive character or the repute of the opponent’s trade mark. In this case the Board does not find that the probability of a future, non-hypothetical risk of detriment to the earlier mark or of unfair advantage being taken of it by the mark applied for would be so obvious that the opposing party does not need to put forward and prove any other fact to that end and that in any case, even though it is not an absolute requisite, it has not been shown that the earlier mark has an exceptionally high reputation. Since at least two of the three cumulative conditions for the application of Article 8(5) CTMR are not satisfied, the appeal also has to be rejected insofar as it was based on Article 8(5) CTMR and there is no need to evaluate whether the other conditions of the article have been satisfied.
Consequently, the contested decision must be upheld and the appeal dismissed.
Rule 19(1) CTMIR – Substantation of the opposition – Rule 80(2) CTMIR –Communication by telecopier.
Decision of the First Board of Appeal of 24 May 2011in Case R 2118/2010-1 (German).
In its decision the Opposition Division rejected the opposition as unfounded pursuant to Rule 20(1) in conjunction with Rule 19(1) CTMIR, as the opponent had neglected to substantiate its earlier trade mark. According to the documents submitted, the trade mark claims colours. However, all of the documents submitted show the trade mark in black and white. The opponent requested that the contested decision be annulled and the case be remitted to the Opposition Division for the continuation of proceedings. It states that the documents filed reveal that the trade mark claimed the colours blue and black. It also submitted a colour copy of the earlier trade mark.
The Board observed that the opponent filed a copy of the illustration of the sign covered by the earlier trade mark by fax together with the opposition form. A confirmation copy of this fax in colour was received by the Office by post. Although the copy which contains the colour illustration of the trade mark was not received by the Office until after the expiry of the opposition period, the opposition was still admissible as, in accordance with Rule 15 CTMIR, evidence of the earlier trade mark was not required at that point.
A copy of the certificate of the details entered in the register was also received by the Office within the period set by the Opposition Division. The facts of the matter left the Office in no doubt that the fax transmission was incomplete or erroneous, as the fax machine did not transmit in colour. There was, therefore, a transmission problem within the meaning of Rule 80(2) CTMIR, which means that the Office should have pointed out this problem and set the opponent a period for submitting the original written submission by post.
Consequently, the contested decision was annulled and the case remitted to the Opposition Division for the continuation of proceedings.