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25 February 2005

NEW BORN BABY ruling abandoned

The ECJ has been thwarted in its attempt to issue a ruling in the NEW BORN BABY Case following the withdrawal of an application to register NEW BORN BABY as a Community trademark. The withdrawal means that the ECJ will not have the chance to examine the legitimacy of the Court of First Instance's reasoning, which suggested that the mark was not descriptive.

22 February 2005


The European Court of First Instance has allowed the marks EMILIO PUCCI and EMIDIO TUCCI to coexist. It held that, while the signs are visually and phonetically similar, the difference between the goods covered by the registered EMIDIO TUCCI mark (Classes 3 and 25 of the Nice Classification) and the proposed registration for EMILIO PUCCI (Classes 18 and 24) was sufficient to preclude any likelihood of confusion.

17 February 2005

Complementary goods sold under similar marks may cause confusion

In Waterford Wedgwood plc v Assembled Investments (Proprietary) Limited, the First Board of Appeal of the OHIM has annulled a decision to dismiss an opposition to the registration of WATERFORD STELLENBOSCH for wine. The board held that since the goods covered by the proposed registration were complementary to glassware products covered by the plaintiff's WATERFORD mark, there was a risk of confusion.

14 February 2005

ECJ confirms cancellation of BSS registration

In Alcon Inc v OHIM, the European Court of Justice has upheld the cancellation of the mark BSS under Article 7(1)(d) of the Community Trademark Regulation. Evidence showed that BSS stands for 'balanced salt solution' - a customary designation for ophthalmic preparations. Accordingly, BSS was precluded from being registered in relation to these goods.

28 January 2005

ECJ rules on PEAK time for exhaustion

In Peak Holding AB v Axolin-Elinor AB, the ECJ has clarified the circumstances in which goods can be described as having been "put on the market" and thereby subject to exhaustion of trademark rights pursuant to Article 7(1) of the Community Trademark Directive. Among other things, the court noted that importing goods and paying the required customs duties with a view to selling them did not mean that they had been put on the market.

27 January 2005

No place for NURSERYROOM on the register

In Geddes v OHIM, the European Court of First Instance has upheld a decision to refuse the registration of NURSERYROOM as a Community trademark for various goods intended for babies. It held that the mark, made up of the words 'nursery' and 'room', was descriptive of the intended purpose of the goods concerned.

21 January 2005

Sweet mark applications turn sour

The European Court of First Instance has issued two decisions against a confectionery manufacturer. The court refused its applications to register (i) the three-dimensional shape of a sweet in a specific form, and (ii) a figurative mark depicting a twisted wrapper for the same sweet. It reasoned that the marks were not distinctive despite having been used for many years in conjunction with the famous Werther's Original brand.

20 January 2005

No confusion without similarity in conflict of marks with a reputation

In Hallmark Cards Inc v Rolex Promotions SA, the OHIM Board of Appeal has denied the existence of likelihood of confusion between trademarks consisting of different word elements but similar crown devices. Both parties claimed that their marks had a reputation but the board refused to consider this issue in detail, reasoning that reputation cannot come into play if marks are found to be dissimilar.

18 January 2005

Henkel's bottle shape mark is distinctive, rules CFI

In Henkel KgaA v OHIM, the European Court of First Instance has overturned an earlier decision refusing the registration of the three-dimensional shape of a bottle for cleaning products. The court held that the packaging had the minimum level of distinctiveness required as it possessed certain characteristic elements that distinguished it from other products on the market.

16 December 2004

OHIM's new examination practice may lead to more uncertainty

In response to complaints about delays in trademark registration, the OHIM is now providing applicants with non-binding opinions on the registrability of trademarks following formal - rather than substantial - examination. However, the OHIM now reserves the right to re-examine applications for absolute grounds of refusal at any time. This may lead to even more uncertainty as to the status of applications than was the case under the previous practice.

14 December 2004

Frischpack cheesed off following packaging mark refusal

In Frischpack GmbH & Co KG v OHIM, the European Court of First Instance has upheld a decision to refuse the registration of a three-dimensional Community trademark consisting of packaging for sliced cheese. The court agreed that the mark lacked distinctive character from the perspective of the average consumer.

09 December 2004

Board should have considered distinctiveness evidence, rules CFI

In Kaul GmbH v OHIM, the European Court of First Instance has overturned the OHIM's decision to dismiss the plaintiff's opposition to the registration of an ARCOL mark. The court held that the OHIM had given insufficient weight to the plaintiff's evidence highlighting the high level of distinctiveness of its CAPOL mark for identical goods.

07 December 2004

All prior rights need not be considered in opposition actions, CFI rules

In MGM v OHIM, the European Court of First Instance has ruled that MGM had not been adversely affected by the OHIM's decision to refuse to consider some prior national trademark rights submitted as evidence in MGM's successful opposition action. The court held, among other things, that the OHIM is under no obligation to consider all the rights that form the basis of an opposition if others are sufficient to uphold the action.

02 December 2004

ECJ outlines the principles for registrability of advertising slogans

The ECJ has held that the slogan 'das Prinzip der Bequemlichkeit' ('the principle of comfort') does not lack distinctiveness for goods in Classes 8 and 12 of the Nice Classification, which include furniture. Interestingly, the ECJ stated that the Court of First Instance had misinterpreted the Community Trademark Regulation but held that the operative part of the judgment remained justified on other legal grounds.

30 November 2004

HUBERT opposition turns sour for dairy product manufacturer

In Vedial SA v OHIM, the European Court of Justice has upheld a decision dismissing the plaintiff's opposition to the registration of HUBERT for, among other things, milk and milk products. It concluded that there was no likelihood of confusion with the plaintiff's earlier SAINT-HUBERT 41 mark for similar goods.