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European IP Bulletin, Issue 34, September 2006 - Trade Marks
TRADEMARKS
5. “Warm Welcomes” Umwelcomed by OHIM
In a recent OHIM Second Board of Appeal decision R 19/2006-2, Overseas Real Estate Limited applied to register a community trade mark WARM WELCOMES for services in classes 35, 36, 37, 39, 42, and 43 inter alia for ‘business management’, ‘real estate’, ‘transport’, ‘legal services’, and ‘provision of temporary accommodation’. In response, the examiner held that the trade mark was not eligible for registration as it did not fulfil the essential condition of registration under Article 7(1)(b). According to Art 7(1)(b) of Council Regulation (EC) No 40/94, “trade marks which are devoid of any distinctive character shall not be registered”.
On appeal, the applicant argued that the words WARM WELCOMES are not commonly used for the contested services and are not directly descriptive of the services; thus, they are capable of being distinctive and can be registered. The applicant further argued that the examiner can only reject the registration of signs under Art 7(1)(b) when the sign has absolutely no capability or possibility of distinguishing services of the applicant from those of the other undertakings.
The court rejected these submissions and held as follows:
- Art 7(1)(b) is a ground to refuse registration of signs that are incapable of performing the essential function of a trade mark which is to identify the origin of goods or services
- the mere fact that the applicant’s mark conveys no specific information about the goods is not in itself sufficient to establish that the mark possesses distinctive character. “WARM WELCOMES” are English words encapsulating the ethic of being friendly, helpful, polite, and invited. The words do not allow consumers to mentally recognise them with the goods or services of the applicant. Rather, it reminds consumers of only the applicant’s business ethics
- in conclusion, the words ‘WARM WELCOMES’ fail to function as a trade mark within the meaning of Art 7(1)(b)
This case encapsulates the heart of trade mark law that the marks must be able to distinguish the goods or services of one undertaking from those of other undertakings, for being able to be registered. Therefore, if consumers see the mark in a promotional advertisement but cannot notice its commercial origin; or if such marks have no possibility of indicating the origin of products or services on which they are applied, they cannot be registered as trade marks because obviously the mark is unable to fulfil the necessary function of a trade mark.
Since the distinctiveness is a primary requirement for trade mark registration in every trade mark law, traders should be more concerned about distinctiveness while choosing trade marks in case that they want to register them in the future.
6. Intel Corporation Inc. V CPM United Kingdom
Intel owns a large number of United Kingdom and Community trade mark registrations for the word marks INTEL and INTEL INSIDE for goods in classes 9 and 16 and for services in classes 38 and 42. CPM, which has 4,000 staff across 10 countries, registered INTELMARK in 1997 for marketing and telemarketing services in class 35. In 2003, Intel applied for a declaration of invalidity on the ground that the use of INTELMARK by CPM without due cause would take unfair advantage of or be detrimental to the distinctive character or the reputation of its earlier INTEL marks under section 5(3) of the Trade Marks Act 1994.
However, Intel's claim was rejected on the grounds that there would be no material damage to the distinctiveness or repute of INTEL if INTELMARK was used in a normal and fair manner in relation to the services for which it was registered by CPM. Intel appealed the decision on the grounds that the hearing officer failed to give due weight to the evidence of the reputation enjoyed by INTEL in relation to computers and computer-linked products, and of its distinctive character, and that he also failed to apply the "global appreciation" test required under section 5(3) when assessing whether the use of INTELMARK would lead to unfair advantage or detriment.
In dismissing the case, ([2006] All ER (D) 399 (JUL)) Mr Justice Patten agreed with CPM's argument that its use of INTELMARK was not in any way damaging to the distinctiveness or repute of the INTEL brand. He acknowledged Intel's brand strength, referring to a branding chart from 1993 which placed Intel third among the world's most successful brand names, behind Coca-Cola and Marlboro. However, Patten J concluded that the reputation enjoyed by the INTEL mark would be sufficient for the average consumer to focus on INTEL in INTELMARK but that the addition of ''MARK'' in a single word created a degree of dissimilarity.
This judgment is a big blow for Intel and many other large corporations which assume that their registration accompanied by their reputation will always be enough to prevent the registration of similar marks. It is quite clear that the Patent Office will not be so easily persuaded by large companies and will review each application on its merits.
7. Sergio Rossi V Office For Harmonisation in the Internal Market
On 18 July 2006, the Court of Justice of the European Communities dismissed the appeal made by Sergio Rossi in an appeal against judgment delivered on 1 March 2005 by the Second Chamber of the Court of First Instance (CFI) of the European Communities. (Case T-169/03 Sergio Rossi v OHIM [2005] ECR II-685 between Sergio Rossi SpA and the OHIM).
Back in June 1998, an application was made to register “SISSI ROSSI” as a community trade mark for goods in class 18 (leather goods and bags). Sergio Rossi opposed the application on the basis that there would be confusion with their earlier community and international trade mark “MISS ROSSI” registered for goods in class 25 (footwear).
The Opposition Division refused the registration in its entirety and held that the marks were similar. However, the First Board of Appeal of OHIM allowed registration, finding that the marks in question were only vaguely similar. A further appeal to the CFI resulted in a finding that there was no confusion between marks in question. During the hearing at the CFI, the opponent raised the argument for the first time that all of the relevant goods were sold through the same channels and were made of the same raw materials. That argument was rejected by the CFI as being too late.
The appeal to the ECJ was advanced on three grounds:
- The CFI made an incorrect analysis of the relevant factors under Art 8(1)(b) of Regulation 40/94.
- The CFI gave no reasons to reject the principle head of claim (contrary to Art 81 of the Rules of Procedure of the CFI).
- The CFI wrongly denied the appellant a right to adduce evidence (contrary to Art 44(1)(e) of the Rules of Procedure and/or because it was based a breach by OHIM of Art 73 of Regulation No. 40/94).
The orders sought were the rejection of the CFI decision in its entirety, rejection in part (insofar as it related to leather and imitation leather goods) or referral back to OHIM or the CFI.
The Court held:
- Rejecting the first argument: that appeals are restricted under the Statute of the Court of Justice to matters of law only. The appellant was effectively seeking a reappraisal of the facts.
- Rejecting the second argument: the pleading said to represent the principle head of claim was rightly ruled inadmissible by the CFI and was therefore not part of the case.
- Rejecting the third argument: the CFI was obliged to consider only the evidence put forward by the parties. Since the new pleading was not part of the case, the CFI was not obliged to consider it. Furthermore, any breach by OHIM of Art 73 of Regulation No. 40/94 was not argued before the CFI. Consequently, the CFI could not have made an error of law on this issue.
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