Trade marks: registry review – February 2015Print publication
On appeal, the EU General Court has upheld the OHIM Board of Appeal’s earlier decision to reject the application for the work mark PIANISSIMO in respect of a wide range of engines, machines and electrical devices. It was decided that the mark, meaning “extremely silent” to the Italian speaking public, would be perceived by the relevant public as a promotion of one of the products’ characteristics, rather than as an indication of origin. This decision reminds us that a community trade mark (CTM) has a unitary character, requiring distinctiveness throughout the EU; by virtue of being devoid of distinctive character in Italy, the refusal was just.
An application for the word mark TERRAFLEX in respect of goods in class 1 was opposed by the owner of the earlier identical mark in respect of different goods in class 1 and class 2. In the Opposition Division, it was held that the evidence submitted – a statement claiming that the earlier mark had been used in 12 EU Member States from 2007 to 2011 with a turnover up to EUR 895.505 per year as well as 35 product sheets in English labelled “Technical information TERRAFLEX-F” – was insufficient to prove genuine use of the earlier mark. Although the statement was admissible, as it had been drawn up by the party involved, it was to be given less weight than the independent evidence. The Board of Appeal supported the findings of the Opposition Division. Whether the earlier mark’s use had been genuinely put to use here, this decision is a clear reminder of the importance to keep evidence of use in the life of a trade mark, including information regarding (i) the goods and/or services for which the trade mark has been used; (ii) financial turnover under the trade mark; (iii) examples of sales records, promotion, advertising and sponsorship under the mark; and (iv) the geographical area in which the trade mark has been used.
Oppositions to two registrations of the word mark KENZO, in respect of wine and a variety of primarily wine-related goods and services, have been allowed by the EU General Court. The oppositions cited the earlier CTM KENZO for various goods including cosmetics, leather goods and clothing, and were based on the taking of unfair advantage of the earlier mark. The EU General Court approved the OHIM Board of Appeal’s reasoning that the goods and services involved were all part of the “luxury sector”, and therefore it was possible that the owners of the trade mark for cosmetics may also be active in the alcoholic drinks sector. The existence of a link, combined with the strong reputation of the earlier identical mark made sufficient grounds for the board to find a high likelihood that the mark applied for would ride on the coat-tails of the earlier mark. This is an interesting decision, given that few cosmetics producers dabble in the drinks industry.
THE SUBURBS (figurative) 
In an application by Suburban Cocktails Limited to register a figurative mark including the words “the suburbs” in class 43, the proposed mark was opposed by the owner of the earlier mark SUBURBIA in classes 41 and 43. The IPO held that the marks had a fairly high degree of visual similarity between them, high degree of aural similarity, and conceptually the marks were, if not identical, similar to the highest degree. When these factors were combined with identical services, the Office held that, even in circumstances where the average consumer exercises a high degree of care, it would lead to “indirect confusion” at the very least. This kind of confusion is interesting, as it is described as that where the average consumer notices the differences in the trade marks, but nonetheless assumes a link between the undertakings. This was sufficient, and the opposition was successful.
Trade Marks Top Tip: Survey Evidence
The admissibility and usefulness of survey evidence in trade mark infringement cases has been a hot topic since the decision in Marks & Spencer plc and another v Interflora Inc and another , and has been considered more recently in the decision of Enterprise Holdings, Inc v Europcar Group UK Limited and another . In the High Court decision, Europcar was held to have infringed Enterprise’s registered “e” trade mark in relation to car rental services by use of its own “e” logo in connection with identical services. The decision is interesting, as it is based in part on survey evidence, the admissibility of which was decided in an earlier hearing . In that decision, Morgan J decided that the survey evidence was admissible, in spite of no less than nine different objections being raised, including sample size, demographic bias, leading questions and the date of the surveys. This is a key decision in terms of the application of Interflora, and also demonstrates that properly conducted survey evidence can be of real value in a trade mark case.
 Grundig Multimedia AG v OHIM, Case T-11/14
 NU3 N.V v ACTEGA Terra GmbH
 Kenzo Tsujimoto v OHIM, Case T-322/13
 In the matter of Application No. 3030953 by Suburban Cocktails Limited
  EWCA Civ 1501
  EWHC 17 (Ch)
  EWHC 2498 (Ch)