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EUIPO at INTA 2019: Session on the Strategic Plan 2025

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Mediation at EUIPOOn May 30-31, the EUIPO will hold the Office’s second ever mediation conference, reflecting both the interest in and the popularity of mediation as a growing discipline within intellectual property.

Mediation has been offered at second instance at EUIPO since 2011, and is free of charge for users. It’s a quick and efficient way of resolving disputes, with experienced, fully trained, multilingual EUIPO staff acting as mediators.

The recent establishment of the Alternative Dispute Resolution Service within the Boards of Appeal is another milestone in the development of mediation at EUIPO. The new service manages and promotes the alternative dispute resolution activities of the Boards, which include mediation and the possibility of conciliation to parties in trade mark and design cases.

Mediation and conciliation are both vital assets for users. They can accelerate dispute resolution, assist in finding global solutions, and significantly cut litigation costs. Mediation and conciliation also guarantee confidentiality and minimise risk for parties. They are excellent tools for small businesses, which may not have the time or the resources to pursue lengthy legal proceedings.

It is against this background that the IP Mediation Conference is taking place. It brings together mediation leaders from around the world to explore a set of topics that go to the heart of this swiftly evolving practice. The global mediation landscape will be surveyed, along with cutting-edge trends like artificial intelligence (AI) in mediation and hybrid alternative dispute resolution techniques. Specific focus will be placed on mediation for different-sized companies, the integration of mediation in international judicial systems, and influencing skills.

Centred on dynamic debate and exchange of views, this conference is participative at its core, and offers excellent opportunities for networking. Registration is still open through the following link https://euipo.blumm.it/event/ar/1/ip-mediation-conference

The conference team can be contacted on [email protected]

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https://euipo.blumm.it/event/ar/1/ip-mediation-conference

https://euipo.blumm.it/event/ar/1/ip-mediation-conference

mailto:[email protected]

mailto:observatory.orphanworks%40oami.europa.eu%0D?subject=





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Monthly statistical highlights March* 2018 2019

European Union Trade Mark applications received 13 625 14 249

European Union Trade Mark applications published 10 387 12 352

European Union Trade Marks registered (certificates issued)

12 462 13 507

Registered Community Designs received 9 834 8 557

Registered Community Designs published 8 372 10 790

* Statistical data for the month in course is not definitive. Figures may vary slightly thereafter.

130001400015000

EUTMreceived

EUTMpublished

EUTMregistered

RCDreceived

RCDpublished

10000

5000

9000

4000

8000

3000

7000

2000

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20192018

1100012000


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Estonia launches new online features The Estonian Patent Office (EPA) has released enhanced features on its Back Office and Front Office systems for filing trade marks online.

The implementation went live on 1 April 2019, coinciding with the date when the amendments to the Directive harmonising trade mark law in the EU Member States entered into force in Estonia.

This release comes as a result of the work carried out by the EUIPO and its partners under the European Cooperation Projects, in particular the project ‘ECP2 Major Improvements to Back Office’. The project supports IP Offices to make the main business processes for designs and trade marks more efficient, reliable and user-friendly. This project falls within Line of Action 4 of EUIPO’s Strategic Plan 2020.

The EUIPO and its stakeholders are working together on five major European Cooperation Projects. The overall aim of the projects is to benefit users across the EU by providing modern, state of the art tools and services for EU IP offices.

The China Trademark Association visits EUIPOA delegation from the China Trademark Association (CTA) visited the EUIPO from 2 to 3 April.

The CTA is the biggest trade mark users’ association in China, representing the interests of businesses, trade mark agencies, relevant organisations, experts and scholars across China. Created in 1994, it represents the Chinese trade mark community.

The first day of the visit was dedicated to the Boards of Appeal (BoA), following a visit taken by a Boards delegation to Beijing on 15 October 2018, during which the CTA and the BoA initiated a fruitful exchange on several topics of common interest.

The second day was dedicated to international cooperation, as well as the tools and practices that the EUIPO, together with the European Union Intellectual Property Network, have developed for the benefit of their joint users.

CTA and EUIPO also discussed the benefits of integrating Chinese trade mark data into TMview, the world’s largest TM searchable platform, which China is expected to join this year. The CTA delegation also received a briefing on the work of the European Observatory on Infringements of Intellectual Property Rights, particularly its studies and reports on IP.

https://euipo.europa.eu/ohimportal/european-trade-mark-and-design-network

https://euipo.europa.eu/ohimportal/european-trade-mark-and-design-network


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EUIPO at INTA 2019: Session on the Strategic Plan 2025A delegation from the EUIPO, led by the Executive Director, Christian Archambeau, will attend the 141st INTA Annual Meeting, held this year in Boston, from 18 to 22 May.

On Sunday 19 March, the Executive Director will be hosting the session ‘The Road to 2025: What’s Next for EUIPO?’, which is open to all attendees and will take place from 9:15 to 10:00 am in Room 258C of the Boston Convention Center.

The EUIPO is currently developing a new Strategic Plan 2025 building on the achievements of the Office’s first two strategic plans. The future plan aims to ensure that the Office delivers added value and growth by making intellectual property (IP) protection more relevant, accessible and enforceable for businesses, especially SMEs.

As an essential part of preparing the plan, the EUIPO would like to hear from participants at INTA. All the input, views, ideas and experiences shared will help to shape the future of the Office and the IP landscape for the benefit of citizens and businesses in Europe and globally.

Commissioner Elżbieta Bieńkowska visits EUIPOThe EU Commissioner for Internal Market, Industry, Entrepreneurship and SMEs, Elżbieta Bieńkowska, visited the EUIPO’s premises on 25 April 2019.

During her visit, the Commissioner met with the EUIPO’s Executive Director, Christian Archambeau, who provided a high-level overview of the Office, its strategic projects, activities and its future milestones. A Memorandum of Understanding (MoU) was signed to strengthen cooperation between the European Commission and the EUIPO.

Commissioner Bieńkowska also gave an address to EUIPO staff during her visit, on the eve of the annual World Intellectual Property Day, which was celebrated globally on 26 April.


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A: Court of Justice: Orders, Judgments and Preliminary Rulings

C-693/17 P; COMFIT BOXES CONTAINERS; BMB v EUIPO; Judgment of 6 March 2019; EU:C:2019:176;

Language of the case: EN

RESULT: Appeal dismissed

KEYWORDS: Distortion of facts or evidence, Matters of fact appealed to CJ, New submission on appeal

FACTS:The RCD proprietor was granted registration of the RCD for the product indications comfit boxes and container. An application for invalidity was filed pursuant to Article 25(1)(c) to (g) CDR on the basis of an IR for a figurative trade mark with effect in France for sweets in Class 30. The Cancellation Division granted the application for invalidity under Article 25(1)(e) CDR.

The RCD proprietor appealed. The Boards of Appeal (BoA) confirmed the existence of likelihood of confusion (LOC) on the part of the relevant public on account of the high visual similarity of the signs, which are not offset by phonetic and conceptual differences and of the fact that the goods in question have at least a high degree of similarity.

The RCD proprietor filed an action before the General Court (GC), relying on three pleas in law: (i) an incorrect legal basis for the BoA decision, (ii) infringement of Article 25(1)(e) CDR and (iii) infringement of Article 63(1) CDR. The GC dismissed the action. It considered the reference made to the provision of the EUTMR instead of the French Intellectual Property Code as a mere formal error. It also found that the BoA had correctly assessed the evidence and had been able to find that there was a LOC.

The RCD proprietor appealed to the Court of Justice (CJ). The CJ dismissed the appeal.

RCD

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SUBSTANCE:The single plea in law raised: Article 25(1)(e) CDR comprised of four parts. The first part merely asserted that the sign covered by the IR was registered as a figurative mark (not as a 3D mark). There was no express allegation of distortion of the facts (para. 25). The same sign was taken into consideration by the BoA and this was not disputed by the RCD proprietor before the GC. Thus, it cannot validly claim that the GC carried out an assessment on the basis of a different sign to that covered by the IR (paras 27-28).

Regarding the second part of the plea, the RCD proprietor claimed that the GC incorrectly refused to take into account that the RCD, unlike the earlier IR, is represented filled with sweets. The second part was a mere request for re-examination of the application and therefore dismissed (para. 36).

The third part of the plea was inadmissible since the RCD proprietor sought to obtain a fresh appraisal of the GC’s assessment of the facts relating to the visual, phonetic and conceptual similarity of the signs (para. 49).

Finally, in the fourth part, the RCD proprietor claimed that the contested judgment incorrectly assessed the error in reference to the legal provision without specifically challenging the GC’s reasoning. This claim was therefore rejected as a mere request for re-examination of the arguments already raised before the GC (paras 57-58). Further

the RCD proprietor contested that the GC did not take into account French case-law. This was also rejected as French case-law has no binding effect on the adjudicating bodies of the Office (paras 60-62).

B. General Court: Orders and Judgments on appeals against decisions of the EUIPO

T-789/17; TecDocPower / TecDoc; TecAlliance GmbH v EUIPO; Judgment of 7 February 2019; ECLI;

Language of the case: DE

RESULT: Action dismissed

KEYWORDS: Dissimilarity of the goods and services, Nature of the goods and services, Proof of use

FACTS:The applicant sought to register the word mark TecDocPower as an EUTM for solutions for information processing, namely software for processing and managing document contents in the field of industrial process control and publication production; all the aforesaid goods solely for the field of technical documentation for power plants and power plant installations in Class 9.

An opposition was filed pursuant to Article 8(1)(b) CTMR [now Article 8(1)(b) EUTM] based on (i) the word mark TECDOC, registered in Germany and as an international registration designating the EU,


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and (ii) on a German figurative mark consisting of a black square and the word element TecDoc written in white letters at the bottom. All earlier marks were registered for goods and services in Classes 9, 35 and 42. The figurative mark was also registered for services in Class 35. The applicant requested proof of use of these earlier marks.

The Opposition Division (OD) dismissed the opposition finding that the goods and services were dissimilar.

Upon appeal from the opponent, the BoA formulated different subcategories of the goods and services for which the earlier marks were genuinely used though it confirmed the dissimilarity of the goods and services, hence no likelihood of confusion.

The opponent filed an action before the General Court (GC), relying on two plea(s) in law: (i) Article 42(2) and (3) CTMR [now Article 47(2) and (3) EUTM] and (ii) Article 8(1)(b) CTMR [now Article 8(1)(b) EUTM]. The GC dismissed the action.

SUBSTANCE: (i) PROOF OF USE.The BoA did not define the SUBCATEGORIES of the goods for which genuine use of the earlier marks was shown too narrowly. The purpose of the goods and services is a relevant factor when defining the subgroup (para. 44). The purpose of the earlier marks’ goods and services is to localise information about automobile parts by electronic

means (undisputed) (para. 43). Thus, the goods and services for which genuine use was shown were to be limited to the automotive industry.

(ii) COMPARISON OF THE GOODS AND SERVICES.There is no overlap between the potential purchasers of the goods covered by the mark applied for, namely power station operators and engineers and experts in the field, and potential purchasers of the goods and services covered by the earlier marks, namely professionals in the automotive sector. Therefore, the goods in Class 9 were dissimilar (para. 55). Also the goods and services were dissimilar (para. 56). Hence it was not necessary to compare the signs and the principle of interdependence when assessing likelihood of confusion (para. 56).

T-647/17; CHIARA FERRAGNI / Chiara; Serendipity and Others v EUIPO; Judgment of 8 February 2019; EU:T:2019:73;

Language of the case: IT

RESULT: Action upheld (BoA decision annulled)

KEYWORDS: Identity of the goods and services, Similarity of the goods and services, Figurative element, Visual similarity, Conceptual similarity, Similarity of the signs, Likelihood of confusion, Personal Name Mark


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FACTS: The applicant sought to register the figurative mark below as an EUTM for goods in Classes 18 and 25.

An opposition based on the earlier Benelux word mark Chiara, registered for, inter alia, goods in Class 25, was filed pursuant to Article 8(1)(b) CTMR [now EUTMR].

The Opposition Division (OD) partially upheld the opposition (for part of the contested goods in Class 18 and all the contested goods in Class 25).

The applicant filed an appeal. The Board of Appeal (BoA) dismissed the appeal. It found that the contested goods in Classes 18 and 25 were, respectively, similar and identical to the earlier goods; the signs had an average degree of visual similarity and an above average degree of phonetic similarity; the conceptual comparison was ‘neutral’ and the earlier mark had ‘normal’ inherent distinctiveness. It concluded that there was a likelihood of confusion for members of the Benelux general public having a normal level of attention.

The applicant filed an action with the General Court (GC), relying on a single plea in law: infringement of Article 8(1)(b) CTMR [now EUTMR]. The GC upheld the action.

SUBSTANCE: The BoA’s assessment on relevant public (para. 21) and comparison of goods (paras 23-24) was confirmed.

The figurative element of the mark applied for has intrinsic distinctive character, being a fanciful drawing with no relation to the products concerned in Classes 18 and 25 (para. 38). Due to its highly stylised character, colour, position and size, it is at least as distinctive as the verbal elements of that mark taken together (para. 40). Therefore, the assessment of the similarity of the signs at issue cannot be made by attributing more weight to the verbal element of the mark applied for than to its figurative element (para. 41).

The signs have a low degree of visual similarity, because of the presence of the figurative element in the mark applied for, which has a considerable

EUTM application

Earlier trade mark


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impact on the overall visual impression of the mark (para. 49) and a medium or low degree of phonetic similarity, mainly due to the element ‘ferragni’ of the mark applied for (para. 61). They have no conceptual similarity (para. 74). The element ‘ferragni’ will be memorised by the consumer as a more distinctive element than the first name, taking into account that Ferragni is an uncommon surname in the Benelux territory, and rarer than the name Chiara (perceived as an Italian common name insofar as this name is known in the local language versions, i.e. the French (‘Claire’) and German (‘Klara’) versions (para. 70). The mark applied for also includes a figurative element with clear semantic content (para. 73).

Taking into account the differences between the signs, there is no likelihood of confusion (paras 84-86).

T-823/17; Etnik / ETNIA; Etnia Dreams v EUIPO; Judgment of 13 February 2019; EU:T:2019:85;

Language of the case: ES


KEYWORDS: Legitimate Expectation

FACTS: The applicant sought to register the word mark Etnik as an EUTM for goods and services in Classes 3 and 35.

An opposition based on the contested trade mark application Etnik was filed pursuant to Article 8(1)(a) CTMR. The language of the proceedings was English. In the field ‘explanation of grounds and other remarks’, the opponent indicated in Spanish that it had registered the trade mark Etnia. The opponent also submitted an accompanying letter in Spanish indicating that it invoked Article 8(1)(b) CTMR. The Opposition Division (OD) dismissed the opposition as inadmissible because it was not based on an earlier trademark within the meaning of Article 8(2) CTMR and the opponent failed to submit, within the time limit, a translation of the relevant parts of the notice of opposition.

The opponent filed an appeal. The Board of Appeal (BoA) dismissed the appeal, confirming OD’s reasoning.

The opponent filed an action before the General Court (GC), relying on seven pleas in law: (i) infringement of Article 8 EUTMR, (ii) infringement of Rules 17(3) and (4) CTMIR, (iii) infringement of Article 9 EUTMR, (iv) infringement of Articles 46(3) and (4) EUTMR and Article 47 EUTMR, (v) infringement of Articles 41 and 47 Charter of Fundamental Rights of the European Union, (vi) infringement Articles 20 and 48(2) Charter of Fundamental Rights of the European Union and (vii) infringement of the principles of good faith and legitimate expectation. The GC dismissed the action.


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SUBSTANCE: (i) INFRINGEMENT OF ARTICLE 8 EUTMR.This plea should be understood as being based on Article 46 EUTMR. In its opposition notice, the opponent based the opposition on the mark Etnik, although it intended to base it on the EUTM Etnia with a different registration number. In spite of the similarity between the marks Etnik and Etnia, the indication of the term Etnik cannot be considered as a clear identification of the mark Etnia, within the meaning of Rules 15 and 17 CTMIR (para. 43). The indications presented in the notice of opposition in a language other than the language of proceedings cannot be taken into account because a translation was not provided (Article 146(7) EUTMR) (para. 50). Irrespective of the language issue, the indication of the mark Etnia and its registration number in the explanation of opposition grounds are insufficient to conclude that the opponent’s intention was to base its opposition on that mark when not indicated in the corresponding field of the opposition notice (para. 51). A clarification in the grounds of opposition is belated (para. 53).

(ii) INFRINGEMENT OF RULES 17(3) AND RULE (4) CTMIR.The BoA did not find the appeal inadmissible because of a lack of translation but because the earlier mark was not identified correctly. Therefore, there is no infringement of Rule 17(3) CTMIR. As to Rule 17(4), the lack of a clear identification of the earlier trade mark leads to inadmissibility if it is not

overcome within the opposition period. The Office is not obliged to invite the opponent to overcome the irregularity (para. 65).

(iii) INFRINGEMENT OF ARTICLE 9 EUTMR.Article 9 EUTMR defines the scope of the right conferred by an EUTM and, therefore, the effects of its registration. However, it does not concern the registration conditions. Consequently, Article 9 does not form part of the legal framework to be taken into consideration by the Office when it examines an application for registration or a notice of opposition (para. 70).

(iv) INFRINGEMENT OF ARTICLES 46(3) AND (4) EUTMR AND ARTICLE 47 EUTMR.As the opposition was deemed inadmissible, the BoA rightly considered that there was no reason for it to fix a period in which the opponent may submit facts, evidence and arguments in support of its case (para. 81). The inter partes stage of the opposition proceedings commence only when the Office has verified that the opposition is admissible (para. 85).

(v) INFRINGEMENT ARTICLES 20 AND 48(2) CHARTER OF FUNDAMENTAL RIGHTS OF THE EUROPEAN UNION.The legislator could legitimately consider, without violating the principle of equal treatment, that in order not to infringe the rights of the TM applicant, it was advisable to regulate the conditions under which an opponent has the possibility of overcoming


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an irregularity of its opposition in a stricter manner than the ones provided for the applicant in relation to the irregularities of the TM application (para. 110).

T-762/17; DARSTELLUNG EINER GEOMETRISCHEN FORM; Grammer v EUIPO; Judgment of 20 March 2019; EU:T:2019:17;



KEYWORDS: Minimum degree of distinctiveness, Non-distinctive, Lack of reasoning

FACTS: The applicant sought to register the figurative sign for goods and services in Classes 9, 12, 41 and 42.

The examiner refused the application pursuant to Article 7(1)(b) and Article 7(2) CTMR.

The Board of Appeal (BoA) dismissed the appeal. The mark was held to be devoid of any distinctive character as it was perceived by the partly specialised public as a label, and therefore, as not deviating from the norm.

The applicant filed an action before the General Court (GC), relying on a single plea in law: infringement of Article 7(1)(b) CTMR.

SUBSTANCE: INFRINGEMENT OF THE DUTY TO STATE REASONS WITHIN ARTICLE 7(1)(b) CTMRBearing in mind the duty to state reasons, laid down in Article 75(1) CTMR and the settled case-law (para. 23), the BoA did not provide adequate reasons why the trade mark applied for does not possess a sufficient degree of distinctiveness (paras 25, 26-34 and 35).

The contested decision — by merely referring to the simplicity of the sign, which is perceived as a simple ‘tag/label’ (‘Etikett’) — without, however, explaining the factual bases for these assessments, lacks sufficient reasoning (paras 29, 30-34 and 35).

The decision does not provide any description of the sign that explains why it was deemed simple (para. 30).

The BoA’s mere quotation of the case-law on very simple geometric shapes does not equate to state reasons for the simplicity of the sign (para. 31).

EUTM application


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Even if the BoA confirmed the decision in the first instance, the examiner’s description of the sign’s simplicity (‘slightly altered basic geometric shape’; ‘oblong shape with rounded edges’) cannot serve as an explanation for the BoA’s assessment of the mark’s simplicity since it was qualified as mere ‘verbalisation’ and thus explicitly declared irrelevant by the BoA (para. 32).

Consequently, the GC annulled the contested decision for lack of reasoning without analysing the distinctiveness of the sign (para. 36).

T-777/17; TOBBIA / Peppa Pig; Xianhao Pan v EUIPO; Judgment of 21 March 2019; ECLI:EU:T:2019:180;



KEYWORDS: Likelihood of confusion, Visual similarity

FACTS: The EUTM proprietor obtained registration of the figurative mark TOBBIA for goods in Class 25, namely clothing, footwear, headgear.

An invalidity application was filed pursuant to Article 53(1)(a) CTMR, in conjunction with Article 8(1)(b) CTMR based on the earlier figurative mark for,

inter alia, clothing, footwear, headgear in Class 25. The Cancellation Division rejected the invalidity application.

The applicant appealed and the Board of Appeal (BoA) upheld the appeal. It found likelihood of confusion (LOC) between the two signs based on the identity of the goods and the average visual and conceptual similarity of the trade marks.

The EUTM proprietor filed an action with the General Court (GC), relying on four pleas in law: (i) infringement of the period for bringing an appeal (ii) inadmissibility of documents submitted for the first time before the BoA (iii) failure to state reasons and (iv) infringement of Article 8(1)(b) CTMR. The GC dismissed the action.

EUTM

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SUBSTANCE: (i) INFRINGEMENT OF THE PERIOD FOR BRINGING AN APPEAL.Since the time limits for bringing an appeal, as set out in Article 60 CTMR and Rule 49(1) CTMIR, were respected, the first plea is rejected (paras 13-17).

(ii) INADMISSIBILITY OF THE DOCUMENTS SUBMITTED FOR THE FIRST TIME BEFORE THE BOA.Keeping in mind that, according to Article 76(2) CTMR and settled case-law, the Office has broad discretion to take into account new facts or evidence, and that the BoA did not refer to these documents in assessing the LOC, the plea is rejected as ineffective (paras 22-24).

(iii) FAILURE TO STATE REASONS.Keeping in mind settled case-law concerning the obligation to state reasons and in particular that the reasoning may also be implicit on the condition that it allows the Court to exercise its review, the third plea is rejected (paras 27-43).

(vi) INFRINGEMENT OF ARTICLE 8(1)(b) EUTMR.The relevant public is the general public of the EU, the level of attention of which is average (not disputed). The goods at issue were identical (not disputed) (para. 39).

The signs are visually similar (paras 42-46). From a phonetic standpoint, there is a certain correlation between the first word element in the earlier sign and the contested sign (paras 47-49). The signs are

conceptually similar to an average degree (paras 50-53).

As to the global assessment of LOC, in view of the identity of the goods and the visual and conceptual similarities between the signs, the differences are not sufficient to dispel any LOC on the part of the relevant public (para. 57). The visual similarity is of particular importance in the global assessment, since — regardless of whether the sales take place in self-service shops — the purchase of clothing generally involves a prior visual examination of the marks (para. 58).

T-88/18; ARMONIE; Gruppo Armonie v EUIPO; Judgment of 5 February 2019; EU:T:2019:58;

Language of the case: IT


KEYWORDS: Distinctive element, Laudatory mark

FACTS: The applicant sought to register the figurative mark ARMONIE (below) as an EUTM for building materials for pavement and cladding in Class 19.

The Office refused to register the EUTM application pursuant to Article 7(1)(b) and (c) CTMR [now EUTMR], as it was descriptive and devoid of distinctive character.


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The applicant filed an appeal. The Board of Appeal (BoA) dismissed the appeal. It found that the products were intended for the general public composed of average consumers normally informed and reasonably attentive and prudent. The sign was descriptive, since the Italian term ‘armonie’ could indicate to the Italian-speaking average consumers that the products were likely to create a pleasant and harmonious atmosphere. The sign was also devoid of distinctive character, because it consisted of an informative message concerning one of the characteristics of the relevant products.

The applicant filed an action with the General Court (GC), relying on a single plea in law: infringement of Article 7(1) and (2) CTMR [now EUTMR]. The GC dismissed the action.

SUBSTANCE: RELEVANT PUBLIC.The definition of the relevant public and its level of attention is confirmed (para. 14). It is not sufficient for an applicant to assert that, in a particular sector, the consumer is particularly attentive to trade marks, but it must support this contention with facts and evidence (para. 15).

LACK OF DISTINCTIVE CHARACTER.The term ‘Armonie’, being the plural of the Italian word ‘Armonia’, refers to the concepts of ‘proportionate correspondence’/‘adequate arrangement [of the elements] in a whole’. The Italian-speaking consumers could consider that the relevant products are primarily intended to create or organise a pleasant place/environment insofar as it is harmonious (para. 28). Furthermore, and taking into account the simplicity of the sign itself, it also has a laudatory character in terms of advertising, being a mere promotional formula highlighting a positive quality of the products concerned (paras 29-30). The sign applied for does not allow Italian-speaking consumers to identify the products as coming from a particular undertaking (para. 31) and lacks any distinctive character (para. 34).

DESCRIPTIVE CHARACTER.Since the ground for refusal pursuant to Article 7(1)(b) CTMR [now EUTMR] was properly established, there is no need to examine alleged infringement of Article 7(1)(c) CTMR [now EUTMR].

REFERENCE TO OTHER EUTMs/NATIONAL MARKS.As to the Office’s practice in similar cases, although the Office is required to exercise its powers in accordance with the general principles of EU law and must take into account the decisions already taken on similar applications, the application of those principles must be reconciled with respect for the principle of legality (paras 39-43). It has been

EUTM application


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established that the sign was correctly refused (para. 44). The previous decisions at national level are irrelevant, since the EU trade mark regime is an autonomous system (para. 46).

T-231/18; Djili (fig.) GILLY; Et Djili Soy Dzhihangir Ibryam v EUIPO; Judgment of 12 February 2019; EU:T:2019:82;



KEYWORDS: Ending of mark, Likelihood of confusion, Phonetic similarity, Word mark

FACTS: The applicant sought to register the figurative mark Djili as an EUTM for goods and services in Class 29.

An opposition based on the earlier Romanian word mark GILLY, registered for goods in Class 29, was filed pursuant to Article 8(1)(b) EUTMR. The Opposition Division (OD) dismissed the opposition. It found that there was no likelihood of confusion.

The opponent filed an appeal which the Board of Appeal (BoA) upheld, finding that there was likelihood of confusion.

The applicant filed an action with the General Court (GC), relying on a single plea: infringement of Article 8(1)(b) EUTMR. The GC dismissed the action.

SUBSTANCE: PRELIMINARY REMARKS. The applicant argues that the earlier mark was filed in bad faith and not used. Bad faith is a significant factor in the context of an application for a declaration of invalidity under Article 59(1)(b) EUTMR. It is not, however, a factor that must be taken into account in opposition proceedings brought under Article 8 EUTMR (para. 16). The proof of genuine use must be raised expressly and in good time before OD. It cannot be raised before the BoA for the first time (paras 17-19).

RELEVANT PUBLIC. The relevant public is the general public of Romania. The level of attention of consumers was average since the goods are of mass consumption (not disputed)(paras 24-25). The goods at issue were in part identical and in part

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highly similar (not disputed)(para. 27). The signs are visually similar to a low degree. Since the earlier mark is a word mark, the visual appearance and stylisation of the sign applied for are irrelevant for the visual comparison (paras 30-31). The GC confirms the BoA’s finding that the signs were phonetically highly similar and that no conceptual comparison was possible as the signs were meaningless for the Romanian public (paras 41,45). In Romanian, the element ‘gi’ of the earlier mark is pronounced in almost the same way as the word element ‘dji’ of the mark applied for (para. 36). The pronunciation of the letter ‘l’ of the mark applied for will be identical to that produced by the pronunciation of the element ‘ll’ of the earlier mark. Moreover, the sound produced by the pronunciation of the final letter ‘i’ of the mark applied for will be perceived by Romanian consumers as identical to that produced by the pronunciation of the final letter ‘y’ of the earlier mark (para. 40).

LIKELIHOOD OF CONFUSION. For the question of likelihood of confusion, it is not relevant whether the contested mark is used on the market with the figurative element of a parrot (para. 50). The GC confirms that (i) due to the low degree of visual similarity and (ii) the high degree of phonetic similarity (if not identity), and (iii) since the phonetic perception of the signs cannot be ignored, although the visual comparison is more important, and (iv) the goods are in part identical and in part highly similar, there was likelihood of confusion (para. 52).

T-278/18; DENTALDISK; Nemius Group v EUIPO; Judgment of 13 February 2019; EU:T:2019:86;



KEYWORDS: Competence of the Boards, Descriptive

FACTS: The applicant sought to register the word mark DENTALDISK for goods and services in Classes 10 and 35, i.e. for goods and services that relate to the dental field and refer to discs used in the dental sector. The examiner refused the application in part, pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR.

The Board of Appeal (BoA) confirmed the examiner’s decision. It added reference material from the internet showing that ‘dental discs’ are used in the creation of dental crowns, bridges and implant accessories, and dismissed the appeal.

The applicant filed an action before the General Court (GC), relying on two pleas in law: (i) opposition to the consideration of additional reference material by the BoA and (ii) infringement of Article 7(1)(c) EUTMR.

SUBSTANCE: (i) PRELIMINARY ADMISSIBILITY ISSUES.As requests to lodge a reply are no longer provided


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for in IP proceedings before the GC, such a request cannot be based on Article 83(1) and Article 84 RPGC and is rejected (paras 15-23).

General references, in the application, to previous submissions lodged before the Office are inadmissible, under Article 21 of the Statute of the CJEU and Article 177(1)(d) RPGC (16/02/2017, T-71/15, Land Glider / LAND ROVER (fig.) et al., EU:T:2017:82, § 50) (paras 24-26).

(ii) OPPOSITION TO THE CONSIDERATION BY THE BoA OF ADDITIONAL REFERENCE MATERIAL.Having the same competences as the examiner, the BoA may, when assessing an examiner’s decision refusing registration, carry out a new, full examination of the merits of the application for registration, in terms of both law and fact (Article 71(1) and (2) EUTMR). The BoA may ask the parties, if necessary, to submit observations (Article 70(2) EUTMR) (para 29). The BoA is required to examine the facts of its own motion to determine whether the application falls under any absolute grounds for refusal of registration (Article 95(1) EUTMR) (para. 30).

Thus, the BoA can rely — after hearing the parties — on the existence of facts found through internet searches which were conducted after the filing date (paras 30-31). However, keeping in mind that the relevant date for the assessment of an absolute ground for refusal is the date on which the

application for registration was filed, the GC takes into consideration only those documents which contain a date earlier than the filing date (paras 34-35).

(iii) INFRINGEMENT OF ARTICLE 7(1)(c) EUTMR.The relevant public is the English-speaking professional public in the medical field, including the dental medical field (paras 43-46). The mark ‘DENTALDISK’ is perceived by the professional public as referring to dental discs. The misspelling of ‘DISC’, using the letter ‘K’ instead of ‘C’ is negligible (para. 51).

There is a sufficiently direct and specific relationship between the expression and the goods and services, since dental implants and prostheses are made using dental disks (para. 62).

Since the sign is descriptive in respect of dental apparatus the same conclusion applies for retail services of dental apparatus (para. 65). Thus the BoA correctly concluded that the sign is descriptive for goods and services that relate to the dental medical field and could use dental discs (paras 58, 59 and 67).

The BoA did not err in conducting internet research on the correctly spelled sign ‘dental disc’. Since the orthographic deviation is aurally irrelevant, the BoA was entitled to demonstrate by means of the internet extracts that the expression ‘dental disc’ was descriptive (paras 51 and 69).


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The GC confirms that descriptive use by only one operator is already ‘an additional indication’ of the descriptive nature of the trademark application (para. 70).

T-63/18; TORRO Grande Meat in Style (fig.) / TORO et al. Torro Entertainment v EUIPO; Judgment of 14 February 2019; ECLI;



KEYWORDS: Likelihood of confusion

FACTS: The applicant sought to register the figurative mark for services in Classes 35 and 43. An opposition based on the earlier EUTMs for the word mark TORO, registered for services in Classes 35 and 43, was filed pursuant to Article 8(1)(b) EUTMR.

The Opposition Division (OD) upheld the opposition. It found that there is a likelihood of confusion (LOC) for the English-speaking public in the EU for all the services considered similar or identical.

The Board of Appeal (BoA) partially upheld the appeal in respect of some of the services in Class 35, which it considered dissimilar. The opposition was dismissed for dissimilar services.

The applicant filed an action with the General Court (GC), relying on two pleas in law: (i) infringement of Article 8(1)(b) EUTMR, (ii) infringement of Articles 94(1) and 95(1) EUTMR. The GC dismissed the action.

SUBSTANCE: (i) INFRINGEMENT OF ARTICLE 8(1)(b) EUTMR.Relevant public. The GC confirms that the BoA did not err in the assessment of LOC focused on the English-speaking public (para. 25). Comparisons of goods and services. The comparison of goods and services must relate to the wording of the services covered by the EUTM application and the earlier marks and not to the actual use. The GC rejects the argument alleging differences between the arrangements for the marketing of services actually offered under the signs (para. 34).

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Dominant element. The verbal element TORRO, due to its position and larger font, dominates the perception of the EUTM application (paras 43 and 44), whereas the figurative elements are not so striking graphically as to draw the attention of the consumer (para. 42). Distinctive element. The term TORRO of the EUTM application has a distinctive character as it is meaningless for the English-speaking public. The remaining verbal elements of the mark applied for are weakly distinctive (para. 43).

Visual similarity. The differences resulting from the fact that the EUTM application contains additional verbal and figurative elements are not sufficient to neutralise the similarity resulting from the complete reproduction of the earlier marks in the mark applied for (para. 48). Aural similarity. Taking into account that the terms ‘grande’ and ‘meat in style’ are secondary they might not be pronounced, and therefore the signs have a high degree of phonetic similarity or are even identical for the English-speaking public.

Conceptual similarity. As the terms TORO and TORRO have no meaning for the English-speaking public, the conceptual comparison is neutral (paras 58 and 59). Likelihood of confusion. For identical and similar goods, the visual and phonetic similarities between the signs suffice to conclude that there is a LOC on the part of the relevant English-speaking public (paras 62, 64 and 66).

(ii) INFRINGEMENT OF ARTICLES 94(1) AND 95(1)EUTMR.Statement of reasons. Duty of care. The statements of reasons for the contested decision are adequate and the applicant has not established that the BoA disregarded its duty of care (para. 78).

T-162/18; ALTUS / ALTOS; Beko v EUIPO; Judgment of 14 February 2019; EU:T:2019:87;



KEYWORDS: Admissibility, Suspension of the proceedings

FACTS: The applicant sought to register the figurative mark for goods in Classes 7, 9 and 11.

An opposition was lodged against the registration of the mark for goods in Class 9 pursuant to Article 8(1)(b) EUTMR. The opposition was based on 22 earlier marks. Several earlier marks were revoked or declared invalid in the course of the opposition proceedings. The Opposition Division partially upheld the opposition based on the Slovak word mark ALTOS for some of the goods in Class 9.

The applicant appealed and requested the proceedings be suspended due to pending


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revocation proceedings against the earlier Slovak mark. The Board of Appeal (BoA) rejected the request and dismissed the appeal. It held that there was a likelihood of confusion regarding the earlier Slovak mark. The other earlier rights could not result in a different finding. The outcome of the revocation proceedings would have no effect on the opposition, since, at the date of the publication of the EUTM application, it was not subject to the requirement of proof of genuine use. Accepting that opposition could be rendered devoid of purpose by filing a revocation request based on non-use during the course of proceedings would render the initial five-year ‘grace period’ illusory. It would also serve as an incentive for EUTM applicants to delay opposition proceedings.

The applicant filed an action with the General Court (GC), relying on a single plea in law: Rule 20(7)(c) CTMIR. The GC upheld the action.

SUBSTANCE: The earlier mark on which the opposition is based must be valid not only at the time of the publication of the application for registration of the contested mark, but also at the time that the Office gives a decision on the opposition (para. 41). If the earlier mark loses its validity during the course of the proceedings, those proceedings become devoid of purpose (para. 42).

A suspension is not mandatory when revocation proceedings against the earlier mark are pending (para. 38). It was, however, for the BoA to determine, prima facie, the likelihood that an application for revocation would succeed for the purposes of weighing the competing interests (para. 44). The fact that opposition proceedings may become devoid of purpose does not render the grace period conferred by Article 18(1) and Article 57(1)(a) and (2) EUTMR illusory, since that period remains intact during the five years provided (para. 48). The BoA may take into account the stage of the procedure at which the application for suspension was filed and the possible dilatory conduct of the party requesting suspension (para. 51). In that regard, the BoA must examine the circumstances in which the request for suspension has been made (para. 52).

In accordance with Article 11 EUTMR, no conflict can arise between the EUTM applied for and an earlier mark which has been revoked during the opposition proceedings (para. 56).

EUTM application

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Since the BoA did not properly examine the parties’ interests when assessing the request for suspension, the decision was annulled.

T-133/18; Lumiqs (fig.) / Lumix et al. (fig.); IQ Group Holdings v EUIPO; Judgment of 19 March 2019; EU:T:2019:169;



KEYWORDS: Similarity of the goods and services

FACTS: The applicant obtained the international registration (IR) designating the European Union of the sign, which was later limited to the goods high bay and mid bay lighting apparatus for industrial applications incorporating sensors and integrated software, all for the illumination of industrial premises, including without limitation warehouses and cold storage; but not including Christmas tree lights or any of the aforesaid goods being for use with Christmas tree lights and not including festival lights or any of the aforesaid goods for use with festival lights in Class 11.

An opposition based on the earlier EU marks registered for various goods in Classes 11 and 28 was filed on the ground of Article 8(1)(b) CTMR.

The Opposition Division (OD) after finding proof of use of the earlier marks in respect of electric lights for Christmas trees (decorative Christmas tree lights, candle lights without cables, decorative Christmas tree lights without cables) in Class 11 and electric decorations for Christmas trees (decorative Christmas tree lights without cables) in Class 28, upheld the opposition and refused protection in the European Union for the sign with the reasoning that there was likelihood of confusion (LOC). The applicant appealed.

The Board of Appeal (BoA) dismissed the appeal. It confirmed LOC, finding that the goods were remotely similar. Despite their different purposes, the goods at issue, namely electric light sources which produce light for illumination purposes, were aimed at the same consumer, could be produced by the same entities and shared the same distribution channels.

The applicant filed an action before the General Court (GC), relying on one single plea in law: infringement of Article 8(1)(b) CTMR. The GC upheld the action.


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SUBSTANCE: INFRINGEMENT OF ARTICLE 8(1)(b) CTMRThe relevant public consists of a specialised public, as well as average consumers, who will display an average to high level of attention (para. 35).

The goods under comparison have different purposes, namely practical and industrial purposes for the IR’s goods, whereas the goods covered by the earlier marks are exclusively intended for decorative and aesthetic purposes for Christmas trees (para. 43). The goods are not complementary either, since the electric lighting apparatus for industrial use covered by the IR is not conditional on the purchase of the electric lights and decorations for Christmas trees covered by the earlier marks

(para. 45) nor in competition with them (para. 46). Thus lighting apparatus for industrial use, on the one hand, and electric lights and decorations, on the other, cannot be deemed to be similar on the mere basis that they are both ‘light sources’ or ‘electrical lighting apparatus’ (para. 47).

The fact that they may have the same distribution channels is not sufficient for a finding of similarity (para. 48). Nor is it particularly important that the goods may be sold in the same commercial establishments (department stores or supermarkets), since very different kinds of goods may be found in these same retail outlets. Consumers do not automatically assume that they are from the same source. The same applies when — as in the present case — the goods are sold online (para. 49). Finally, the goods covered by the IR are purchased mainly by professionals, while the relevant goods of the earlier marks are, as a rule, intended for the general public (para. 51).

Notwithstanding the degree of similarity between the conflicting signs (paras 54-55), the fact that the goods are not similar means that there is no LOC.

IR designating the EU

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New Decisions from the Boards of AppealEUIPO decisions, judgments of the General Court, the Court of Justice and the National Courts can be found on eSearch Case Law. Decisions of the Presidium of the Boards of Appeal can be found here and the EUIPO Official Journal here. For best results, please use either the Mozilla Firefox or Google Chrome browsers.

13/02/2019, R 2589/2017-4, JAMONES ALPUJARRA

Outcome: Decision confirmed.

Norms: Article 7(1)(c) EUTMR, Article 59(1)(a) EUTMR, Article 74(2) EUTMR, Article 75(2) EUTMR.

Keywords: Collective mark, Geographical origin.

Summary: The cancellation applicant submitted a request for declaration for invalidity on the basis of absolute grounds (§ 4). The Cancellation Division rejected the request (§ 7).

As regards Article 7(1)(c) EUTMR the Board finds that although the contested EUTM is descriptive for the

goods and services applied for, because it benefits from the exemption granted for collective marks under Article 74(2) EUTMR, the request for invalidity shall be rejected on that ground (§ 20).As regards Article 7(1)(b) EUTMR the Board finds that although ‘hams’ identify the products for which the contested mark is registered or those which the services in question concern, the addition of the term ‘Alpujarra’ will make it possible to identify the products and services of the collective EUTM owner from those of other associations (the purpose of collective marks) (§ 25).As regards Article 7(1)(g) EUTMR the Board stipulates that the cases of refusal of registration provided for in the said article mean that there is an ‘actual deceit or a sufficiently serious risk that the consumer will be deceived’. The challenged collective mark may be correctly and validly used without implying deceit on the part of the public. Indeed, the conditions of use laid down in the regulations governing use of the contested mark (hereinafter ‘regulations’) include the fact that the products and services in question come from the area of Alpujarra (§ 30).The only reason for annulment was that the regulations governing use of the collective mark do not refer to the EUTM in dispute, but to ‘Jamón de la Alpujarra’. It is not the competence of the Board to examine these regulations in all other respects (§ 33). While the new regulation applicable to the indication of the trade mark in question should be included in the regulations governing use, this amendment could not be applied retrospectively to

Contested EUTM

https://euipo.europa.eu/eSearchCLW/#basic/*///number/1231%2F2017

https://euipo.europa.eu/ohimportal/en/presidium-of-the-boards-of-appeal

https://euipo.europa.eu/ohimportal/en/official-journal



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the case at hand (§ 35). In any event, the difference between the indication given in the regulations governing the use of the collective mark namely ‘Jamón de la Alpujarra’ and the contested collective EUTM ‘JAMONES ALPUJARRA’ is very slight, since they differ only in ‘ham of.../hams’. It is clear that, although the regulations of use do not reflect this last sign as such the public can clearly link it with the regulations of ‘Jamón de la Alpujarra’ (§ 36).The appeal is dismissed.

08/02/2019, R 1882/2018-2, Lüneburger Heide (fig.)

Outcome: Decision confirmed.

Norms: Article 7(1)(b) EUTMR, Article 7(1)(c) EUTMR.

Keywords: Figurative trade mark, Geographical origin, Descriptive element (yes), Non-distinctive.

Summary: The examiner rejected the EUTM application under Article 7(1)(b) and (c) EUTMR, for part of the goods and services (§ 3).

‘Lüneburger Heide’ is the name of a region of the North German Plain, which is characterised by a predominantly heath, geest and woodland landscape. Tourism is the strongest economic activity in the region. All these are well-known facts. Lüneburger Heide is a geographical indication, which is known throughout Germany (§ 18). As regards Article 7(1)(c) EUTMR, the Board notes that the figurative element of the EUTM is linked to the name ‘Lüneburger Heide’. This image does not make it possible to distract the relevant public from the word elements, but rather strengthens the message conveyed (§ 31). The EUTM was correctly rejected on this absolute ground.

As regards Article 7(1)(b) EUTMR, the Board finds that the sign as a whole does not have any unusual or otherwise surprising elements. It does not have any features that could be perceived by the relevant public as having an essential function. The word element ‘Lüneburger Heide’ is perceived as merely giving information that the products originate from the region and that the services provided are offered there. Thus, the sign cannot satisfy the essential function of a trade mark (§ 38).The appeal is dismissed.

Contested EUTM



http://ec.europa.eu/agriculture/quality/door/registeredName.html?denominationId=2076


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20/03/2019, R 1853/2017-2, MakTea (fig.) / McDonald’s et al.

Outcome: No need to adjudicate.

Norms: Article 7(1)(c) EUTMR, Article 7(1)(f) EUTMR.

Keywords: Figurative trade mark, Descriptive, Contrary to public policy or principles of morality

Summary: The Board in its interim decision dated 3 October 2018 referred the case back to the examiner in order to consider the registrability of the EUTM application on the basis of absolute grounds stipulating that the word ‘mak (mák)’ [‘poppy seed’] is meaningful in seven official languages of the EU and the word ‘tea’ is understood in all EU Member States (§ 15 of the interim decision). The Board took into consideration that the figurative elements do not change the meaning of the sign (§ 17 of the interim decision).Furthermore, the sign applied for is also objectionable under Article 7(1)(f), since it is also contrary to public policy and the law to advertise/trade narcotic drugs or goods which may contain such drugs, in the abovementioned Member States. Poppy tea, in fact is a herbal tea infusion brewed from poppy straw or seeds of several species of poppy (§ 18 of the interim decision).Based on the above the EUTM applied for has been refused by the Office. That decision has become final; therefore the opposition has become without purpose. Consequently, the proceedings must be closed without ruling on the merits of the appeal (§ 13-14).

Contested EUTM

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08/11/2018, R 2173/2017-5, DEVICE OF A HERALDIC COAT OF ARMS IN GREY, BLACK, WHITE (fig.) / DEVICE OF HERALDIC COAT OF ARMS IN BLACK AND WHITE (fig.)

Outcome: Decision annulled.

Norms: Article 8(1)(b) EUTMR.

Keywords: Enhanced distinctiveness (no), Figurative element, Likelihood of confusion (yes).

Summary: An opposition has been submitted against the contested EUTM as represented above on the basis of Articles 8(1)(b), 8(5) and Article 8(4) EUTMR. The Opposition Division rejected the opposition (§ 3-5).

On the distinctiveness of the earlier right, the Board states that use is not equivalent to reputation: a sign may be widely used in trade, but never become an identifier of a single commercial origin (§ 16). If a party contends that its sign retains the benefit of an enhanced distinctiveness, this should be clearly demonstrated, reducing as far as is reasonable the need for registering authorities to make inferences or extrapolations (§ 17). The Board is of the view, in agreement with the contested decision, that it is insufficient to show that the earlier right has the benefit of an enhanced distinctiveness in relation to the services relevant to the contested sign (§ 20). After analysis of the evidence the Board concludes that while there is nothing in the earlier mark which would counsel the Board to confidently declare that the earlier rights are particularly inherently distinctive, it is fair to find that their capacity to distinguish is at least average (§ 39).

On Article 8(1)(b) EUTMR, the Board concludes that the services at issue are identical (§ 54-56); the similarity between the signs is not profound but

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it exists and is at least average when the overall impact of the signs is considered (§ 52). Overall the Board considers that there is risk of confusion between the signs at stake (§ 65). It has not been found that, the level of attention demonstrated by the relevant public in this case would be consistently and uniformly high; on balance, confusion is likely in this case (§ 66). The opposition thus succeeds and the application is rejected.

27/03/2019, R 1948/2018-2, X (FIG.)

Outcome: Decision annulled.

Norms: Article 7(1)(b) EUTMR, Article 45 EUTMR, Article 45(4) EUTMR, Article 30 EUTMDR.

Keywords: Figurative trade mark, Lack of reasoning, Reimbursement, Right to be heard.

Summary: The examiner partially rejected the registration of the above sign applied for on the basis of Article 7(1) (b), (c) and Article 7(2) EUTMR (§ 4). The applicant in its reply claimed that it had not been given the opportunity to comment on the third-party observations, and that, as an ancillary claim, the sign has acquired distinctiveness through use. After giving consideration to these claims the examiner rejected the application for part of the goods and services on the same legal bases as listed above (§ 9).

The examiner’s argument that the meaning of the sign in question is descriptive because it indicates the size, that is a measurement for the clothing and sports equipment, cannot be accepted (§ 32). The rejection shall be based rather on the lack of distinctive character, the sign in question being only a simple geometric figure and serving only decorative purposes (§ 27-29). On this basis, the sign should have been rejected not only for Classes 25 and 28, but also for the services in Class 41 (§ 35).The Board upholds the appeal and sends the case back to the first instance for reopening the examination on absolute grounds. In addition, the Board stipulates that the applicant shall be informed about the third-party observations and shall be given the possibility to comment on them before a decision is rendered (§ 36-38).

Contested EUTM



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