The Trade Mark Rules 2008 - ITMA

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ALICANTE prices, so the UK visitor will probably enjoy his time shopping in Alicante! DAY TRIPS Tabarca Island. For those lucky enough to stay in Alicante for the weekend, a day trip to Tabarca Island is strongly recommended. It is 11 nautical miles away from Alicante and in the past it was a refuge for Berber pirates. The walls were ordered to be built by King Carlos III in the 18th century, creating a town to house families of Genovese fishermen who were being held prisoner in the Tunisian city of Tabarka. They have been officially declared a Historical and Artistic Site and an Asset of Cultural Interest. Also, the island´s waters have been officially declared a Mediterranean Marine Reserve for their excellent quality. How to get there: A boat trip from The Alicante Marina (by the harbour Top: Parque Canalejas Above: Explanada Right: Town Hall ALICANTE in front of Paseo de la Explanada) can be made comfortably. The company that runs the boats is Empresa Kontiki (tel +34 965 21 63 96). There are several departures every day of the week, approximately every hour. Journey time is approximately one hour. Once on the island, the visitor can enjoy its coves and beaches and in particular, its crystal-clear sea and, if the day is sunny, its great views. Regarding where to eat, visitor will see many typical fish restaurants all around the village. Amongst them, Don Jeronimo at C/ Virgen del Carmen 1, tel. +34 965 96 12 83 or La Gloria at C/ Playa, www.gloria.restaurantesok.com, are recommended. In almost all the restaurants placed at lovely Tabarca´s port, visitor will have the opportunity to try the typical caldero, a stew made of rice, fish and seafood. Altea is an astonishing village with a very beautiful old quarter full of whitewashed houses with blue roofs. It is very lively, particularly during weekends. I would recommend spending the day at the beach and then having dinner at any of its nice restaurants. A visitor will not be wrong if he decides to visit the restaurant La Claudia with a terrace overlooking the sea and lovely views, www.la-claudia.com. It is important to make a reservation in advance. Other restaurants can be found at www.altea.salir.com/restaurantes. How to get there: AP-7 toll motorway or the N-332 dual carriageway. To organise the route, check www.viamichelin.es. I sincerely hope that you enjoy your stay in Alicante! Elena Perez, Estudio Juridico Baylos (Spain), e.perez@baylos.com 24 ITMA Review September 2008
CASE COMMENT The Opposition Division and Board of Appeal refused the application, deciding that the marks at issue were almost identical so, in spite of a lesser degree of similarity between the goods and services, there was likely to be confusion of origin between goods with the earlier mark and goods bearing the mark applied for Art 8(1)(b) CTM Regulation 40/94 (the Regulation)). Apple appealed to the Court of First Instance (CFI). Appeal Apple argued that (1) the Board of Appeal had not considered the high level of attention information technology specialists (the relevant public) would pay; and (2) OHIM was granting TKS an unjustified monopoly, infringing free movement of goods and competition contrary to the EC Treaty. The CFI dismissed both points. The earlier mark, a “complex mark”, featured the word QUARTZ and negligible figurative elements. The word QUARTZ dominated the image the relevant public would keep in mind within the overall impression created by the earlier mark. The marks at issue were almost identical. September 2008 CASE COMMENT Difference in marks was not crystal clear T-328/05: Apple Computer Inc v OHIM: “QUARTZ” Court of First Instance (Third Chamber), 1 July 2008 Apple Computer Inc (Apple) applied to register the word QUARTZ as a Community trade mark (application 1421130) (application), in class 9: computer operating system for use by information technology developers for improving the reproduction of digital images, but specifically excluding products intended for the banking sector. TKS-Tekensoft SA (TKS) opposed on the basis of its Community trade mark registration 368324 (earlier mark) for the following figurative mark, registered for goods in class 9: packets of programs for banking and for services in class 42: including computer programming and computer software development, but all being linked to banking. John Colbourn reports... Apple argued that TKS’s goods and services were intended for users of banking software and its own for information systems developers. The CFI recognised differences in the goods but they were both designed to be installed in computers. An information technology specialist might use TKS’s product in a bank and use Apple’s software in a more general application. There was some degree of similarity between the goods. The important issue was whether the product, although intended for banking, bore to the relevant public some similarity to the product covered by the application. In the CFI’s view they did. Likelihood of confusion must be assessed globally. The marks were almost identical, so less resemblance between the goods was needed for likelihood of confusion. The different applications of the goods were not enough — the relevant public would conclude that that the goods might have the same commercial origin. The EC Treaty (free movement and competition) was not infringed. Apple had not explained how it was infringed. The Regulation conferred exclusive rights on the owner of a Community trade mark and, since likelihood of confusion was established, TKS was legitimately exercising those rights. Comment A word incorporated in a “complex mark”, if it is the dominant element, can enjoy a high level of protection. Jacob LJ commented on this in Phones4u Ltd v Phone4u.co.uk Ltd [2006] EWCA Civ 244 (Court of Appeal). However, national decisions cannot be used to question decisions made in the Community trade mark system. Apple, relying on national decisions, criticised the Opposition Division and Board of Appeal decisions on similarity of goods. The CFI emphasised that the Community trade mark system was autonomous, had its own rules and was independent of any national system. John Colbourn, Redd Solicitors LLP, john.colbourn@redd.eu ITMA Review 25
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Page 11 and 12: FEATURESITMA BUSINESS On 1 October
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Page 19 and 20: If no notice of opposition is recei
Page 21 and 22: ALICANTE ALICANTE Alicante, apart f
Page 23: EATING AND DRINKING Restaurants Ali
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Page 31 and 32: applicants’ trade mark: the oppon
Page 33 and 34: Above: the contested mark Below: th
Page 35 and 36: eally likely to be affected by the
Page 37 and 38: CASE COMMENT In the High Court, it
Page 39 and 40: CASE COMMENT T-304/06 Reber v OHMI
Page 41 and 42: matters. This was followed by a spe
Page 43 and 44: September 2008 PEOPLE Michael Heap

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