Round-up of recent ECJ decisions

Yesterday Advocate General Mazak delivered his Opinion in Case C-254/05 Commission v Kingdom of Belgium. This is an action brought against Belgium for giving hell to importers of fire detectors that do not bear the "CE" sign as an indication that they have complied with EU standards even though they have been tested in the EU member state from which they originate. Beigum puts such goods through a system of tests by local standards authority BOSEC that essentially duplicates the tests they've already undergone, adding delay and expense before they can be sold in Belgium with the addition of the local 'BOSEC' standards mark. Says the AG:

"I am consequently of the opinion that the Court should

(1) declare that Belgium has failed to fulfil its obligations under Article 28 EC by requiring that automatic fire detection systems with point detectors which were lawfully manufactured or marketed in another Member State but which do not have the CE marking: (i) comply with a specific Belgian standard (called ‘standard NBN S21‑100’); (ii) are subject to type approval by ‘BOSEC’, an obstacle made worse by the disproportionate costs which that approval incurs; (ii) undergo tests and checks in connection with that type approval which, essentially, duplicate the controls which have already been carried out under other procedures in another Member State;

(2) order the Kingdom of Belgium to pay the costs".

The IPKat agrees that expensive and duplicative work should be avoided. Merpel however tells him: "if you were a Belgian cat, wouldn't you feel happier if you knew your fire detection equipment was certified reliable, even if it cost you more?"

Tiger, tiger burning bright here


The Beast was in court on Tuesday, in the Court of First Instance ruling in Case T-317/05 Kustom Musical Amplification v OHIM. This was an appeal against OHIM's refusal to grant a Community trade mark to the guitar shape illustrated here, for goods in class 15 (that's 'musical instruments'). The appeal involved a complaint concerning the principle that decisions of OHIM should be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. Said the CFI, allowing Kustom's appeal:

"25 ... in a case where the Board of Appeal assembles of its own motion facts intended to serve as a basis for its decision, it is under an obligation to notify the parties of those facts in order that the parties may submit their views thereon ...

28 As regards the present case, first, OHIM sent internet links, without providing the applicant with hard copies of their content, in two letters dated 23 February 2004 and 13 May 2004 respectively, informing the applicant ... that the shape applied for was not eligible for registration ... Second, the Board of Appeal sent, also without providing the applicant with hard copies, 20 internet links...

33 In paragraph 20 of the contested decision the Board of Appeal states the following:

‘The shapes of guitars actually offered in the market are practically unlimited … Firstly, … it appears that this [pointy] style is commonly found in various other [shapes of] electric guitars in the actual market place (commonly named “pointy guitars”) … Secondly, … it appears that heavy metal or hard rock electric guitars, are commonly offered in a great variety of forms … and extravagant design details’. The Board of Appeal then gives ‘some examples from the sites cited by the examiner’ and lists seven internet links.

34 According to paragraph 21 of the contested decision, ‘the websites cited by the examiner revealed an assortment of guitar models with a great variety of … pointy design … more or less similar to the one applied for, marketed by various guitar manufacturers’. In order ‘to give only some examples from the websites cited by the examiner’, the contested decision specifies eight internet links.

35 In paragraph 22 of the contested decision, the Board of Appeal adds that ‘the websites already quoted by the examiner feature several models of “pointy guitars” … very similar, if not identical, to the shape applied for’ and mentions another five internet links.

36 The applicant’s first ground for complaint ... concerns the seven internet links belonging to the other guitar manufacturers which were sent, before the adoption of the contested decision, in the notices of grounds for refusal. In that context, the applicant criticises the fact that no hard copies were provided of the pages to which those links led at the time when they were taken into account by the examiner and the Board of Appeal. By its second ground for complaint relating to the right to be heard, which concerns the 19 links which were transmitted for the first time in the contested decision, the applicant complains not only that no hard copies were provided, but also that the Board of Appeal took those internet links into account, even though they were facts on which it was not able to define its position before the adoption of the contested decision.

45 ... the Board of Appeal took into account, at the time of the adoption of the contested decision, facts which were not communicated to the applicant prior to the adoption of that decision.

46 In so doing, the Board of Appeal infringed the second sentence of Article 73 of Regulation No 40/94.

47 Therefore, it is necessary to examine whether that infringement of the right to be heard concerns the facts which constitute the basis of the contested decision.

...

55 ... the Court finds that the conclusion in the contested decision that the mark applied for should be rejected is based on facts which were not communicated to the applicant prior to the adoption of that decision. Therefore, the infringement of the applicant’s right to be heard vitiates the very conclusion reached in the contested decision".

The success of this appeal does not mean that the shape is registrable, warns the IPKat. It only means that OHIM should take great care to ensure that every step in its examiners' and Boards' thought-processes, and every shred of evidence, is carefully revealed, and seen to be revealed, to the parties affected by it. Merpel says, URLs by themselves can be useless since there are quite a lot of websites out there that change their content from time to time. Without a print-out, the person concerned may need to go to a forensic consultant in order to retrieve the historical version of the content.


It's easy to assume that any Mars that ends up in trade mark litigation is the maker of calorie-enriched chocolate bars. But in Case T-88/05 Quelle v OHIM - Nars Cosmetics (NARS) the Mars in question was anything but edible. The Community trade mark for which application by Nars' predecessor in title was intially made was for the figurative mark NARS (see above) for goods in Classes 3, 18 and 25 (bleaches, clothing, leather goods etc). Quelle opposed in respect of clothing, footwear and headgear (Class 25), alleging a likelihood of confusion with its own earlier figurative German trade marks for the word MARS. The Opposition Division rejected the opposition on the ground that Quelle's evidence was insufficient to prove the use of the earlier marks. The likelihood of confusion was therefore not considered.

Quelle appealed, filing additional evidence. The Second Board of Appeal of OHIM annulled the Opposition Division’s decision since it found that there was no proof of genuine use of the earlier trade marks but neglected to rule on the admissibility of the new evidence submitted with the grounds of appeal. Then, examining the substance of the case, the Board found that the opposing signs were neither visually nor conceptually similar and that, in spite of their phonetic similarity, confusion was highly unlikely. Consequently, the Board of Appeal rejected the opposition.

On appeal to the CFI Quelle withdrew its grounds of appeal relating to the new evidence and focused on the issues of similarity of marks and likelihood of confusion. The Court dismissed the appeal, adding just this on the meaning of Quelle's earlier marks:

"Conceptually, the earlier marks clearly refer to the idea of the planet Mars. The word ‘mars’ is the only word element of the earlier marks and it appears as a caption referring to the graphic element of the marks, ... which could be interpreted as the representation of a planet and a spacecraft. Furthermore, it is not disputed that the word ‘mars’ is perceived by the average German consumer as a word referring to a planet. Consequently, the earlier national marks are understood by the relevant public to that effect. As regards the word element of the mark applied for, ‘nars’, it has no meaning and no meaning is conferred on it by its stylised representation. That sign in point of fact suggests a name or a fantasy word. The use of names as marks being widespread in the clothing sector ..., the mark applied for will be registered by the relevant public as a name or a fantasy word".

Slightly embarrassed, the IPKat confesses that he had no idea that the MARS logo represented a planet and a space-craft. He thought it was just a pretty picture ...