There is no need to refrain from using a trade mark during the proceedings for its invalidation. As long as the right of protection for a trade mark lasts the party has the exclusive right to use the mark. Hence, the non-use of a trade mark on the ground that the proceedings were held on its invalidation, was the sole decision of the owner, then it can not be given the importance of behavior dictated by compelling reasons.

In its judgment of October 20, 2009 in case T-307/08 , the CFI held that the trade marks below are confusingly similar

The one on the left was filed by Aldi Einkauf GmbH & Co of Germany in connection with goods in classes 18, 25 and 28 and its registration was opposed by Goya Importaciones y Distribuciones of Spain, on the basis of their earlier Spanish trade mark depicted above right in connection with products in classes 18 and 25. The opposition was upheld for goods in classes 18 and 25 both by the Opposition Division and the Board of Appeal. The main core of their reasoning was that the common in both marks word “living” appeared in practically identical typefont and, thus, created a vague similarity between the marks, which, however, was held to be enough for likelihood of confusion. The CFI essentially agreed. It held that

25 In the present case, as has just been stated, the goods concerned are identical or highly similar. Accordingly, a low level of similarity between the opposing signs would suffice for a finding that there is a risk of confusion.

– The visual similarity of the opposing signs

26 As is clear from paragraphs 23 and 24 of the contested decision, the Board of Appeal took the view that the ‘Living’ element of the mark applied for, despite the fact that it is written in a smaller font, is nevertheless the dominant element of that mark, this being the only text element that is perfectly readable. As the ‘OUT’ element is combined with the star contained in the letter ‘O’ and the ‘4’ element appears more in the background, those elements are less clearly perceptible. As the ‘Living’ element common to the two marks is, moreover, written in the two marks in stylised fonts which are almost identical, the Board of Appeal found a certain visual similarity between the opposing marks.

27 That assessment does not appear to be challengeable and, in particular, it cannot be called into question by the applicant’s first and third arguments.

28 Concerning those arguments, according to which the visual elements ‘OUT’ and ‘4’ of the mark applied for and the ‘&’ element of the earlier mark were ignored by the Board of Appeal, despite being important elements determining the distinctive character of the two marks, it follows from paragraphs 23 to 26 of the contested decision that those elements were indeed taken into account by the Board of Appeal, even though it did not reach the same conclusion as the applicant with regard to their dominant character within the mark applied for.

– The phonetic similarity of the opposing signs

29 The common element ‘Living’ will be pronounced in all the manners of pronunciation of the opposing marks concerned which are foreseeable on the part of Spanish consumers. Thus, as the Board of Appeal found in paragraph 25 of the contested decision, even if the other elements of the mark applied for were also pronounced, that would not suffice for a finding that there is no similarity between the marks.

– The conceptual similarity of the opposing signs

30 The Spanish consumer would certainly recognise the number ‘4’ in the mark applied for, as well as the ‘&’ element of the earlier mark. As for the word ‘Living’, which is a very basic word in English, it must be anticipated that the younger generations in Spain would understand that word and, by virtue of that common element, see a clear conceptual link between the two marks, as the Board of Appeal correctly found in paragraph 26 of the contested decision.

31 In those circumstances, it must be held that the marks concerned, assessed globally, are similar. In comparison with the other elements in the two marks, the ‘Living’ element is dominant and not negligible, as the applicant claims. Consequently, no criticism can be levelled at the Board of Appeal’s finding that the marks concerned, despite containing differences, are, on the whole, similar by virtue of the common element ‘Living’ and that the goods are identical.

……………………………….

35 With regard to the second argument, to the effect that the similarity of the word element ‘Living’ common to both marks is insufficient to established a likelihood of confusion, given that that element has only a weak distinctive character in the earlier mark, the Board of Appeal explained in paragraphs 30 and 31 of the contested decision that, although the distinctiveness of the ‘Living’ element cannot be considered high, it must still be considered as a distinctive feature in view of the great importance of the visual element in the opposing marks in relation to goods in classes 18 and 25, which are in principle purchased after a visual inspection. That position is confirmed by the case-law, according to which the finding of a weak distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (see, by analogy, Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 24), it is only one factor among others in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (Case T‑134/06 Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM) [2007] ECR II‑5213, paragraph 70; see also, to that effect, Case T‑112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II‑949, paragraph 61).

36 In addition, the approach taken by the applicant in that respect would have the effect of disregarding the factor of the similarity of the marks in favour of one based on the distinctive character of the earlier national mark, which would then be given undue importance. The result would be that, where the earlier national mark is only of weak distinctive character, a likelihood of confusion would exist only where there was a complete reproduction of that mark by the mark applied for, whatever the degree of similarity between the marks in question. Such a result would not, however, be consistent with the very nature of the global appreciation which the competent authorities are required to undertake by virtue of Article 8(1)(b) of Regulation No 40/94 (see PAGESJAUNES.COM, paragraph 71 and the case-law cited)

This Class46 member wonders why so much weight is placed upon the typefont used, when such typefont is really not uncommon, and why weight is not placed on the – hard to miss – 4 and OUT device elements, particularly when “living” is considered of low distinctiveness. Is the CFI essentially saying that, when comparing marks for identical products, a single common element will do the trick?

Under decision No. 886/2009, the Greek Council of State (the country's supreme administrative court) upheld judgments of the lower courts rejecting Colgate Palmolive's application to register as a trade mark in Greece (in class3) a representation of its toothpaste product, i.e. three parallel curves (two color ones and a white in the middle - unfortunately the device is not available but it looks something like the tiny picture above left). The Greek Trade Marks Administrative Committee, as well as the first instance and appellate administrative courts held that the device is devoid of any distinctive character. The Council of State took the same route and, further, rejected Colgaste's argument that the claimed device is distinctive as it has already been accepted as part of compound "Colgate total & device" trade mark. 

The court's judgment also includes a notable point regarding the crowded field argument. In line with its above  argument, Colgate claimed that the trade mark in question should be accepted as the company owns several other trade marks incorporating similar representations. The Council of State replied that every trade mark is "judged autonomously", citing its earlier jurisprudence in judgment No. 2966/2004. This seems to go against the Greek Office's practice, as ,indeed, the crowded field argument will generally "work" before the Greek Trade Marks Administrative Committee.  

No matter if its design cannot be registered, a toothpaste will help a healthy smile.

 The very useful OHIM's online listing of decisions from several European CTM Courts has just published a judgment favourable to the Ford Motor Company (“Ford”) before the Spanish CTM Court.

In brief: Ford filed a trade mark infringement action against a Spanish undertaking that sold automobile spare parts bearing the FORD oval logo.