Opposition to an Application for a Community Trademark
26.03.2001
The decisions of the Opposition Division as well as the ones of the Board of Appeal of the OHIM ("the Office") concerning the oppositions allow to see the Office doctrine taking shape accurately.
The decisions of the Opposition Division as well as the ones of the Board of Appeal of the OHIM ("the Office") concerning the oppositions allow to see the Office doctrine taking shape accurately.1) Formal IssuesEither for providing translations or for furnishing proofs of use in a time limit, or even for the designation of the opposed right in the notice of opposition, the Office is strict. In the "CESAI/CESA" opposition case, the opponent had mentioned that the opposition was based on "the trademark CESAI No 254.681".It appears when reading the certificate of registration that the trademark No 254.681 is in fact a figurative mark (the word CESAI is preceded by the representation of a "C").As the identification of the opposed right was unclear, this right has not been proceeded with for the opposition.2) Comparison between the CTM application and the opposed prior right2a) Scope of the opposed prior rightAccording to Art. **1**(1)(b) of the CTMR, the trade mark applied for shall not be registered "if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected".The opposition to the registration of a CTM on the basis of a national trade mark aims at preventing the applicant from obtaining a trade mark which has effects in the country in question. In case where the CTM application is rejected, it will always be possible for the applicant to convert the CTM application into national trade mark applications except in the countries "where, in accordance with the decision of the Office [...], grounds for refusal of registration [...] apply to the Community trade mark application [...] (Art. **2**-2(b)).The essential is therefore to properly determine the interference with the opposed earlier trade mark according to the territory of the same, consequently according to the official language(s) of this territory.This is what has been recalled on October 31, 2000 by the Second Board of Appeal of the OHIM giving a decision of the Opposition Division relating to the opposition to the CTM application "MATRATZEN MARKT CONCORD + representation of a man carrying a mattress" with respect to the Spanish word trade mark "MATRATZEN".The Opposition Division had considered that the word "MATRATZEN" was descriptive in German language for designating mattresses and other bedding articles.So the opposed element being considered as descriptive, it cannot prevent third parties to use it.The Board of Appeal decided :- that the word "MATRATZEN" is not descriptive in Spanish language for designating mattresses. The trade mark has a fanciful character.- that the addition of the words "MARKT" and "CONCORD" as well as of the figurative element remind the Spanish consumer who knows the earlier trade mark "MATRATZEN" that the subsequent trade mark derives from it, the word "MATRATZEN" remaining prevalent.The Board of Appeal recalls also that the likelihood of confusion has to be considered as a whole. Because the goods are identical or very similar, a lesser degree of similarity between the signs is necessary in order to generate a likelihood of confusion.It is interesting to compare two decisions of the Opposition Division on the basis of the same French figurative trade mark "WEEK END, le magazine du tiercé et des loisirs + representation of a four-leaved lover", the first one against the CTM application "HAPPY WEEKEND" and the second one against the CTM application "WEEK END FT".* The "HAPPY WEEKEND" designated "newspapers and printed matter", which are identical with the "newspapers and printed matter" designated in the prior trade mark, and "video cassettes and films", which are similar to the newspapers because they serve the same purpose.The word "HAPPY" is an adjective describing the noun "WEEKEND". Consequently, this is an accessory to the main word "WEEKEND". Now the part "WEEK END" is dominant in the earlier mark, the slogan being written with much smaller letters.Therefore, the CTM application appears to be similar to the earlier trade mark.However, the phrase "WEEK END" is understood and used in France to designate the end of the week and many newspapers issued at the weekend bear this mention. Therefore the phrase "WEEK END" has not here a strong distinctive character.By his overall assessment of the trademarks, the Opposition Division comes to the conclusion that the similarity of the signs, reduced by the common character, can involve a likelihood of confusion only for the identical goods and not for the similar ones. Consequently, the CTM application has been rejected only for the identical goods.* The application "WEEK END FT" also designates "newspapers and printed matter".In this sign the phrase "WEEK END" is used as an adjective defining the letters "FT". Even if the public does not directly recognize the abbreviated form of the newspaper "The Financial Times" in the letters "FT", the great majority thereof perceives that the the CTM application refers to the weekend publication associated to the newspaper FT.For its part, the opposed trade mark appears as being associated to luck (clover) and to game (horse-racing bets "Tiercé"). The trade mark will therefore been understood by the public as a wish of "lucky week-end".Consequently, both mark differ one from another in a conceptual manner. No likelihood of confusion between the signs can occur. The opposition has been rejected.2b) Specialty of the designated goods and servicesDuring an opposition, the Opposition Division is led to determine the degree of similarity between the goods and/or services of the earlier trade mark and of the CTM application.In order to determine the similarity, the Office wonders about the nature of the goods, their intended purpose, their customers, ...Always examining the rights as a whole, the First Board of Appeal has emphasized, in a decision dated May 15, 2000, that "the similarity of the marks and the similarity of the goods are interdependent criteria in the sens that a lesser degree of similarity of the goods may be offset by a greater degree of similarity between the marks, and vice versa".So having considered that the degree of similarity was low between the signs "ACAMOL" and "AGAROL" (both marks designate pharmaceuticals for which the ending "OL" is common, the word "ACAMOL" being a contraction of the word "PARACETAMOL" and the word "AGAROL" deriving from the word "AGAR-AGAR", a component of the product), the Board of Appeal established that a high degree of similarity would be necessary to generate a likelihood of confusion.Now the trade mark application "ACAMOL" designates pain-killers, and the earlier trade mark "AGAROL" designates laxatives. According to the Board of Appeal, "though both are pharmaceutical preparations, there is a great difference between pain-killers and laxatives".In so far as the goods are sold in pharmacies, the likelihood is reduced that a qualified professional makes a confusion between the goods which show so different functions. In the same way, if the goods are offered for sale in other outlets where the customer is able to select them for himself, confusion seems improbable since they will not normally be kept in the same display shelf and the customer will search a pharmaceutical preparation taking the properties thereof into account.In the case of the marks "MATRATZEN" and "MATRATZEN MARKT CONCORD + device", the Board of Appeal has also had to compare "Mattresses and bedding articles" (Class 20) to "mattresses and bedding articles for a medical purpose" (class 10).The mattresses for a medical purpose may by bought in the same stores as the mattresses not for a medical purpose. They are not reserved for hospitals, but the private persons may also be led to buy such goods. The fact that theses goods belong to two distinct classes does not affect at all their similarity.3) The opposable prior rightsAccording to article **1**(4), a CTM application shall not be registered upon opposition of a "sign used in the course of trade of more than mere local significance" when the law of the Member State governing that sign "confers on its proprietor the right to prohibit the use of a subsequent trade mark".So the CTM application "INTERPRINT" was rejected upon opposition of the Swedish company name "INTERPRINT KUNGENS KURVA AB".To this end, the opponent had to show :- that he is the holder of the company name ;- a use of more than a mere local significance : the registration of the company name is not sufficient, it has been demonstrated that the sign is used in the whole Sweden and that it is known in this territory ;- that the right is earlier than the filing date of the CTM application (all the proofs undated or the date of which is subsequent to the CTM application were not proceeded with) ; - that the Swedish law allows to prohibit the use of a trade mark on the basis of a company name : the opponent has filed the decision of a Court prohibiting the use of a mark as interferring with a company name ; otherwise he could have cited the Swedish law.It is also compulsory to show which are the goods and/or services that this sign covers. In the case "INTERPRINT", the printing busines has been easily proved. In the case "HELSINT, S.A.L." vs "HELSINN", the holder of the Spanish trade name HELSINT S.A.L. has supplied documents which have made it possible to establish the use of the sign for "activities involving importation and resale of the following goods : polypodium leucotomos, calaguala and miel de cana".The earlier right is properly opposable. However, the goods and services as covered were not considered as similar to those of the trade mark application "HELSINT" : chemical products for use in the manufacture and production of pharmaceutical preparations (the natures of the goods are very different : goods of plant origin vs chemical products) ; perfumery, cosmetics, pharmaceutical preparations (the customer bases targeted by the goods are different : pharmaceutical industry buying raw materials vs customers buying an end product).These decisions of the Office do confirm that the Office estimates the signs as a whole without giving too much significance to the concept of similarity of the goods and services designated by the marks. This fairer consideration of the likelihood of confusion, combined with the strict consideration of the distinctive character of the CTM application at the registration stage, can only give a good image of the Community Trade Mark.
