CTM Newsletters

OHIM PRACTICE

Significant Reductions in CTM Fees

As of May 1, 2009, the total cost for filing a CTM in one to three classes with Casalonga is 1800€, including the newly reduced official fee of 900 € as well as our reduced fee of 900 €. Further, our fees include most costs associated with the registration procedure: verifying and forwarding the publication, the CTM search reports and the registration certificate.

CASE LAW

My Competitor’s Trademark was Accepted, Why not Mine?

In its decision of February 12, 2009 (C-39/08 and C-43/08 ), the European Court of Justice responded to the prejudicial questions referred by the Bundespatentgerich (High Court of Germany) in an appeal that had been brought by two German companies, Bild.T-Online.de and ZVS Zeitungsvertrieb Stuttgart GmbH.

The plaintiffs appealed the German Trademark Office’s refusal to register their German trademark applications "Volks.Handy, Volks.Camcorder” and “Volks.Kredit" and "Schabenpost.” They argued that since the Office had previously accepted for registration similar trademarks, formed with the terms “volks” and “post”, for similar goods, their trademark applications should also have been accepted on the basis of the principle of equal treatment.

The question submitted by the Bundespatentgerich intended to clarify if Article 3 of Directive 89/04 requires, in order to guarantee equal ground between competitors, that identical or comparable trademark applications must be treated equally.

The Court reasoned that the principle of equal treatment must be reconciled with the principle of respect of the law. Therefore, one can not rely upon a decision granted in favour of a third party that was illegal in order to obtain an identical decision.

Consequently, the Court responded in the negative. It concluded that the competent authority deciding on the eligibility for registration of a trade mark is not obliged to ignore the absolute grounds for refusal pursuant to Article 3, paragraph 1 b) and c) of the Directive (equivalent to Article 7 of the CTMR) and accept a trademark for registration simply because the sign applied for is formed in an identical or comparable manner to a sign that has previously been accepted for registration covering identical products.

Nevertheless, it is important that the Court did note that the national competent authority for registration should, in the examination process, take into consideration prior similar decisions and pay particular attention as to whether such decisions should be followed.

Although this decision, which did not create an obligation on the part of the national trademark offices to follow prior decisions, will not guarantee greater consistency, it may result in the national trademark offices paying more attention to prior decisions, which could have an overall positive impact on the consistency of the decisions issued.

Court Requires Detailed Reasoning in OHIM’s Refusal to Accept Trademarks on Absolute Grounds

In its decision of April 2, 2009 (T 379/05), the Court of First Instance CFI annulled the Board of Appeal’s decision rejecting the CTM application ULTIMATE FIGHTING (word mark) for goods and services in Classes 9, 16, 25, 28 and 41 on the basis of lack of sufficient distinctive character and the descriptiveness pursuant to CTMR Article 7.

In its decision, the Board separated the 215 goods and 13 different services claimed in the application to those directly related to fighting and those not directly related to fighting. For the first category, it held that the applied sign would be not perceived by the targeted public as a mark but as a reference to a style of fighting. With respect to second category, the Board held that the sign would be considered by the targeted public as being marketed during or in relation to a competition in mixed martial arts, or as being suitable for the practising of that sport, or as forming part of a merchandising program, so it would not serve to indicate the origin of the relevant goods and services.

In its decision, the Court stressed that it is necessary to evaluate the absolute grounds of refusal in connection with each of the specific goods and services for which registration is sought. It held that the same ground of refusal may only be given for a category or a group of goods or services if such goods/services have a sufficiently direct and specific link to each other that they form a homogenous category. The mere fact that the good and services are in the same class is not sufficient.

Consequently, the Court stated that the goods and services claimed in the CTM Application ULTIMATE FIGHTING did not have a sufficiently direct and specific link to each other to be regarded as constituting a homogenous category and therefore to allow the Board to adopt a general statement of reasons in their regard. The decision was therefore annulled for failure to include an adequate statement of reasons as required by Article 73 of the CTM Regulation and Rule 50(2) of the CTM Implementing Regulation.

LAWS AND REGULATIONS

Codification of the Council Regulation on Community Trademarks

The Community legislator has issued a codified version of Council Regulation No. 40/94 of December 20, 1993 on the Community Trademark.

The codified version, Council Regulation (EC) No 207/2009 of February 26, 2009, entered into force on April 13, 2009. Although the codified version does not introduce any substantive legal changes, the Regulation number as well as a significant portion of the numbers of the different articles have changed.