Office for Harmonization in the Internal Market (Trade Marks and Designs) Boards of Appeal 2006 – examples of case law Alexandra Poch – HoS, DASS, Boards of Appeal (OHIM) Liaison Meeting – Alicante, 15 June 2007

Office for Harmonization in the Internal Market (Trade Marks and Designs) 2 The Boards of Appeal 3 chairpersons 5 rotating members

Office for Harmonization in the Internal Market (Trade Marks and Designs) 3 Statistics 2006 Appeals filed in 2006: 1659 –ex-parte: 591 –inter partes: 1068 Appeals closed in 2006: 1675 –ex-parte: 657 –inter partes: 1000 Languages: EN: 61.48%, DE: 19.95%, ES: 8.86%, FR: 6.75%, IT: 1.21%, Other: 1.75%

Office for Harmonization in the Internal Market (Trade Marks and Designs) 4 Overview Decisions of the Grand Board Restriction of goods and services Absolute grounds for refusal –examples: Misspellings, shape of product, public policy/morality Relative grounds for refusal –examples: Earlier mark included in CTMA Designs

Office for Harmonization in the Internal Market (Trade Marks and Designs) 5 Decisions of the Grand Board R 495/2005-G of 6 July 2006 (SCREW YOU) –Article 7(1)(f) CTMR R 856/2004-G of 10 July 2006 (3D Shape of Lego Brick) –Article 51, Article 7(1)(e) CTMR R 331/2006-G of 27 September 2006 (OPTIMA) –Article 44(1) CTMR

Office for Harmonization in the Internal Market (Trade Marks and Designs) 6 Restriction of goods & services Express and unconditional –R 751/ of 20 September 2006 (VASCULAR WRAP); –R 162/ of 17 January 2006 (SOLUTION/BI-SOLUTION BS) Negative restrictions – limiting goods and services in so far as they do not possess a particular characteristic –R 746/ of 31 March 2006 (TIKKA TIKKA) Other restrictions, e.g. way the goods are sold –R 556/ of 3 February 2006 (ZELOXZAR/ZELDOX)

Office for Harmonization in the Internal Market (Trade Marks and Designs) 7 Absolute grounds for refusal (1) Article 7(1)(b),(c) CTMR: Misspellings –R 352/ of 7 March 2006 (FRESHHH) –R 374/ of 30 January 2006 (exsellent) –R 782/ of 22 November 2006 (XPERT)

Office for Harmonization in the Internal Market (Trade Marks and Designs) 8 Absolute grounds for refusal (2) Shape of product Article 7(1)(b) CTMR: –R 724/ of 22 November 2006 (3D Pet Shelter) Article 7(1)(e)(ii) CTMR: –R 856/2004-G of 10 July 2006 (3D Shape of Lego Brick); –R 1/ of 11 January 2006 (3D Hilti-Koffer)

Office for Harmonization in the Internal Market (Trade Marks and Designs) 9 Absolute grounds for refusal (3) Article 7(1)(f) CTMR: Public policy/morality –R 495/2005-G (SCREW YOU) –R 558/ (REVA) –R 356/ (Erotik Lounge)

Office for Harmonization in the Internal Market (Trade Marks and Designs) 10 Relative grounds for refusal (1) Earlier mark included in CTMA –Likelihood of confusion: R 823/ of 9 October 2006 (SinnLeffers/Sinn) R 268/ of 18 October 2006 (FOCUS Radio/Focus)

Office for Harmonization in the Internal Market (Trade Marks and Designs) 11 Relative grounds for refusal (2) Earlier mark included in CTMA –No likelihood of confusion: R 94/ of 17 January 2006 (BIO KAIKU/BIO) R 566/ of 11 May 2006 (VICTORIA VOGUE/Vogue)

Office for Harmonization in the Internal Market (Trade Marks and Designs) 12 Designs R 1001/ of 27 October 2006 (METAL RAPPERS) R 196/ of 22 November 2006 (Underwater Motive Device) R 216/ of 8 November 2006 (CAFETERA )

Office for Harmonization in the Internal Market (Trade Marks and Designs) 13 Further information Case-law of the Boards of Appeal

Office for Harmonization in the Internal Market (Trade Marks and Designs) Information: (+ 34) (+ 34) Documentation and Support Service Boards of Appeal Office for Harmonization in the Internal Market (Trade Marks and Designs) Avenida de Europa, 4 E Alicante SPAIN