case comment - ITMA

More documents

Recommendations

Info

CASE COMMENT CASE COMMENT Unibanco: late submission meant OHIM did not consider ‘uni’ prefix evidence Union Investment Privatfonds GmbH v OHIM, Case No: T-392/06, ECJ (Third Chamber). In September 2000, Unicre- Cartão International De Credito SA (Unicre) applied for a Community Trade Mark for the device mark, ‘Unibanco’ in respect of services in classes 36 and 38 relating to credit card services and internet communications. Emma Blake reports... Union Investment Privatfonds GmbH (UIP) submitted an opposition to the registration of the mark in July 2001 on the basis of its earlier German registrations for the device marks, UniFLEXIO, UniZERO and UniVARIO for services in class 36 (earlier marks). OHIM's Opposition Division notified both parties that the deadline for the service of submissions was 5 June 2002. On 29 May 2002 OHIM received a fax from UIP responding to the submissions made by Unicre. On 6 June 2002, the Opposition Division received a further submission from UIP referring to a decision by the High Court in Frankfurt as to the registration of marks with prefix ‘Uni’. On 4 February 2003, UIP submitted further evidence as to use of the earlier marks including extracts from a number of economic journals. The evidence supported the view that products with the prefix ‘Uni’ were likely to be understood by the relevant public as originating from the same provider. OHIM’s Opposition Division rejected the opposition on the basis that there was no likelihood of confusion between the marks applied for and the series of earlier marks and that UIP had not submitted sufficient evidence in relation to use of the earlier marks. The evidence submitted on 6 June 2002 or 4 February 2003 was not considered, as it had been served after the expiry of the deadline date. The decision was upheld by the Board of Appeal who agreed that the 16 ITMA Review evidence submitted by UIP had been submitted after the deadline with no justifiable reason, and as such, considered. UIP appealed the Board of Appeal’s decision on the basis that OHIM had not exercised its discretion to consider the evidence as to the use of the earlier marks. OHIM had not considered the likelihood of confusion between the earlier marks and the mark applied for. The evidence submitted on 6 June 2002 was of particular relevance as the German court decision was persuasive evidence as to the use of the earlier marks and supported the argument that the mark applied for would be likely to cause confusion in the minds of the public. The ECJ held that there was no duty on OHIM to consider the late submissions of evidence. Both parties had received prior notification of the deadline and both submissions had been made after the relevant deadline had passed. The ECJ referred to the previous case of Kaul v OHIM which suggested that evidence submitted after a deadline date should be considered if the evidence is of vital relevance to a key issue in dispute. There was, however, no duty on OHIM to do so. In this case OHIM had been aware of its discretion and, having reviewed the evidence submitted on 6 June 2002, had decided that it was not of vital relevance. The same applied in respect of the evidence filed on 3 February 2003. The ECJ also upheld the Board of Appeal’s decision that the evidence sought to raise new issues as to the recognition of the prefix ‘Uni’ in respect of banking products. The ECJ stated that it was not the role of the court to debate what the Board of Appeal’s decision would have been if it had taken into consideration the late submissions of evidence, the role of the court was to decide whether the Board of Appeal had been correct in its decision not to exercise its discretion to consider the late submitted evidence. The ECJ reiterated that it was the responsibility of the parties to provide evidence and respond to objections within stipulated timescales. The Board of Appeal had been correct in exercising its discretion not to consider the late filed evidence and the admissible evidence filed before the deadline did not prove a likelihood of confusion between the mark applied for and the earlier marks. The ECJ therefore rejected the appeal in its entirety. The case is a good reminder of the need to comply with timescales set by OHIM in relation to the filing of evidence. Even the most persuasive of evidence is likely to be rejected if not served in time. Emma Blake, DLA Piper UK LLP, Birmingham, emma.blake@dlapiper.com July/August 2010
Andy Gilchrist Kureha applied for a Community Trade Mark for the word KREMEZIN in class 5, for various forms of oral treatment for medical conditions including renal and liver disease. The application was successfully opposed by Sanofi-Aventis SA on the basis it had registered the earlier international trade mark KRENOSIN for pharmaceutical, veterinary and sanitary products in various designated countries, including Italy. Kureha appealed OHIM's decision to uphold the opposition on various grounds, including that OHIM had erred in adopting an excessively wide classification of the goods covered by Sanofi’s earlier mark. Sanofi had been asked, in its original opposition, to provide evidence of genuine use of its earlier trade mark, but had only been able to adduce such evidence in relation to one product in Italy; being an intravenous treatment for use in a specific heart condition. OHIM concluded that the earlier mark was used for “pharmaceutical preparations for the treatment of the heart”. Kureha argued that OHIM’s construction was too wide, and that, applying the principals of Article 43(2) and (3) of Regulation No 40/94, the class of goods protected by Sanofi’s earlier trade mark should be interpreted more narrowly to include only intravenous treatment for heart conditions. Kureha had (somewhat fortuitously) sought to exclude this CASE COMMENT Kremezin encroaches on Krenosin’s development Case T-487/08 Kureha Corp v OHIM, General Court (Court of Justice of the European Union), 16 June 2010. The General Court has dismissed an appeal by Kureha Corporation, a Japanese company engaged in the manufacture and sale of specialty chemicals, to set aside the opposition of its trade mark application for the word KREMEZIN. In doing so it had to consider whether partial use of an earlier trade mark was enough to prevent a subsequent trade mark registration. Andy Gilchrist reports... particular subset of goods from its own class 5 application. The General Court rejected Kureha’s proposed sub-categorisation as being far too narrow, on the basis this would undermine Sanofi's legitimate interest in being able, in future, to extend its range of goods or services under the protection of its trade mark. In doing so, the General Court stressed that the purpose of Articles 43(2) and (3) was to restrict the number of conflicts between two marks where there is no commercial justification deriving from the active functioning of the mark on the market. It was not intended to restrict trade mark protection to cases where large-scale commercial use has been made of the mark. Moreover, it is impossible in practice for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Kureha also argued that Sanofi had failed to comply with various procedural requirements of Commission Regulation (EC) No 2868/95, and particularly that Kureha had failed to sufficiently prove the existence of its earlier right within the timeframe set by OHIM. Whilst the General Court held that there had been “regrettable delay” (three years, in fact) by OHIM in dealing with Kureha’s request for Sanofi to provide this evidence, it held that OHIM’s only obligation was to request this evidence – it was not prevented from considering this evidence after any deadline it may have previously set. Kureha also failed to convince the General Court that OHIM had erred in assessing the likelihood of confusion with respect to the two marks under Article 8(1)(b) of Regulation (EC) No 40/94. The General Court confirmed that a likelihood of confusion was made out, notwithstanding the fact that the relevant public here was composed of persons whose level of attentiveness may be considered to be high. This case is of interest as it demonstrates the General Court’s approach with respect to the principal of partial use. Kureha may have attempted to carve out certain categories of goods from its trade mark application, knowing that another company was already using a similar registered mark with respect to such goods. However, as this decision shows, it is unlikely that the court will limit a trade mark owner’s protection to those particular goods in respect of which he can show genuine use of his trade mark. A trade mark owner must be afforded enough scope to develop his product in future. It may still be wise, therefore, to draft specifications as widely as possible to ensure maximum protection for your or your client’s brand. Andy Gilchrist, DLA Piper UK LLP, Birmingham, andy.gilchrist@dlapiper.com July/August 2010 ITMA Review 17
Page 1 and 2: The Journal of The Institute of Tra
Page 3 and 4: tribute groups in the UK alone and
Page 5 and 6: ITMA BUSINESS July/August 2010 ITMA
Page 7 and 8: complaints. The Legal Services Act
Page 9 and 10: practitioner whose spouse is a shar
Page 11 and 12: Lianne Bulger (Hammonds), Akosua Me
Page 13 and 14: CASE COMMENT Geoff Weller Summary T
Page 15: elied on at an earlier stage. This
Page 19 and 20: of the elements of a mark is descri
Page 21 and 22: put against them and a proper oppor
Page 23 and 24: circumstances where there is no dir
Page 25 and 26: Board of Appeal had failed to compl
Page 27 and 28: Article 65(4) of Regulation No 207/
Page 29 and 30: through showrooms out of the box (a
Page 31 and 32: etween them was concerned. It was b
Page 33 and 34: The applicant appealed to the Gener
Page 35 and 36: JOST mark in respect of constructio

case comment - ITMA

You also want an ePaper? Increase the reach of your titles

Delete template?

Save as template?