The EU General Court: recent trade mark decisions

VIP accepts donations of BMW M3s (but not with ECO PRO parts).

The EU General Court has seemingly been affected by the current crop of good weather hitting continental shores and has spent the past couple of weeks blissfully upholding every OHIM Board of Appeal decision that comes before it (I say every but actually I’ve only read 5, more accurately therefore I should say that it has upheld the 5 decisions I have read…).

The cases I refer to are:

Luna International Ltd v OHIM, Case T-454/11

Bayerische Motoren Werke AG v OHIM, Case T-145/12

Apollo Tyres AG v OHIM, Case T-109/11

Hultafors Group AB v OHIM, Case T-537/11

Metropolis Immobiliarias y Restauraciones v OHIM, Case T-284/11

I don’t have time to blog about all of these cases, or indeed to post lengthy posts about any of them, I do however want to give a quick overview of the 2 cases that particularly caught my eye: the BMW case and the Metropolis case.

Bayerische Motoren Werke AG v OHIM, Case T-145/12

Back in 2010 BMW obtained an International Registration, designating the European Community, for the word only mark ECO PRO in classes 09 (electric and electronic apparatus etc) and 12 (motor vehicles and parts thereof).  Upon notification of the same to the OHIM the Examiner refused the protection on the basis that the ECO PRO mark was devoid of distinctive character in relation to the aforementioned goods.

BMW appealed the Examiner’s decision and the appeal was heard by OHIM’s Board of Appeal early in 2012. Unfortunately for BMW OHIM’s Board of Appeal dismissed the appeal finding that the relevant public (to be considered when ascertaining whether or not the mark was sufficiently distinctive) were English speaking end consumers who would see the word ECO as being the shortened form of ‘ecological’ or ‘ecology’ and that the PRO element was seen as being the shortened form of ‘professional’. As a result the ECO PRO mark was deemed to mean, to the relevant public, ‘ecological professional’ or ‘ecological supporting’. Further the Board of Appeal determined that the mark had no other interpretation and that as a whole the ECO PRO mark was descriptive and would not be seen, by the relevant consumer, to be an indicator of commercial origin.

BMW then took the matter to the EU General Court arguing that the Board of Appeal had erred in its finding that ECO PRO was devoid of distinctive character on the basis that, in BMW’s view, neither the individual elements nor the mark as a whole has any obvious meaning. The General Court upheld the decision of the Board of Appeal finding that ECO was indeed a common abbreviation of the word ‘ecological’ and that PRO was a laudatory term used, for advertising purposes, to highlight the positive qualities of the goods/services in question. As a result the General Court held that the Board of Appeal had not erred in finding that the two elements, separately were descriptive and/or not sufficiently distinctive. Moving on to consider the mark as a whole the General Court held that the word ‘pro’ only reinforced the term ‘eco’  and that the lexical structure, of a descriptive element followed by a laudatory one, was common in advertising and in commerce. It was therefore found that the relevant public would perceive the words, as a whole, as meaning that the goods were intended for ecological professionals, or were ecological supporting and that as a result the mark as a whole was insufficiently distinctive to avoid falling into the Article 7(1)(b) trap.

In summary therefore the General Court confirmed that it is possible for 2 non-distinctive words to combine to amount to a distinctive combination but that this was not the case in this instance.

Metropolis Immobiliarias y Restauraciones v OHIM, Case T-284/11

In 2008 Metropolis filed a CTM application for the word only mark METROINVEST in class 36 for various real estate (and related) services. Metropolis’ application was opposed by MIP METRO Group on the basis of a prior German national registration for the stylised word mark METRO and also on the basis of a CTM registration for a further stylised word mark METRO. The OHIM’s opposition division upheld the opposition on the grounds that there was a likelihood of confusion on the part of the relevant public as the services were identical and the marks contained an “average degree of aural and visual similarity”.

Metropolis appealed the Opposition Division’s decision but the Board of Appeal dismissed the appeal finding, like the Opposition Decision, that the services were identical and that the marks, irrespective of an absence of conceptual similarity, contained certain visual and aural similarities and that as a result there existed a likelihood of confusion between the marks.

Refusing to give up Metropolis again appealed, this time to the General Court. There were certain procedural points relating to the raising of new evidence which I wont go into in this post. In substance though Metropolis appealed on the grounds that in the absence of any visual, aural and conceptual similarity between the signs there can be no likelihood of confusion even where the services are similar or identical. However the General Court upheld the decision of the Board of Appeal finding that the addition of the word ‘invest’ was descriptive and thus did not form a distinctive or dominant element of the mark in order to offset the overall similarity between the marks. In combination with the identical/similar services this similarity between the marks was sufficient in order for the General Court to hold that there was a likelihood of confusion between the marks and to therefore uphold the opposition.

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