IP Snapshot: May/June 2008

TRADE MARKS

Digipos Store Solutions group Limited v Digi International

Inc (High Court)

The High Court upheld the opposition of the Hearing Officer

to the registration of the appellant's marks on the grounds

of a likelihood of confusion between these and the earlier

registered marks of the respondent, all containing the term

DIGI. The Judge clearly disagreed with the approach of the

Hearing Officer towards the descriptive nature of the DIGI

prefix, and made it clear that he would have reached a

different result were he entitled to consider the case afresh.

However, he stated he was bound to accept the Hearing

Officer's decision in the absence of a "distinct

and material error of principle" or the Hearing

Officer being "clearly

wrong".

For the full text of the decision, click here.

Eurohypo AG v OHIM (ECJ)

The ECJ confirmed that the mark EUROHYPO lacked distinctive

character under Article 7(1)(b) of the CTM regulation, as it

would be perceived as providing information about the type of

services it designated (financial). However, the CFI's

reasoning had been incorrect in assessing distinctiveness under

Article 7(1)(b) solely by reference to descriptive character

under Article 7(1)(c).

For the full text of the decision, click here.

Rousselon Freres et Cie v Horwood Homewares Limited (High

Court)

This case concerned the use of the SABATIER trade mark in

juxtaposition with JUDGE or STELLAR. The Court found that the

mark SABATIER did retain an independent distinctive role in the

marks JUDGE SABATIER and STELLAR SABATIER. Therefore and given

that the goods were identical, it was not possible to maintain

that there is no likelihood of confusion between the SABATIER

mark and the JUDGE SABATIER and STELLAR SABATIER marks. In

reaching this conclusion, it was not necessary for the earlier

mark to have a dominant role in the composite mark; average

distinctiveness was sufficient.

For the full text of the decision, click here.

Ferrero Deutschland GmbH (ECJ)

A Swiss bakery firm, Cornu, applied to register the word

FERRO as a Community trade mark for salted biscuits in Class

30. This was opposed by Ferrero, the confectionery

manufacturer, on the basis of a risk of confusion. The ECJ

found that although there was a low degree of similarity

between the products, ie. between chocolate-covered

confectionery and salted biscuits, there was a reasonable

degree of similarity between the signs, and the reputation of

the FERRERO mark in Germany was so great that there was a

likelihood of confusion between the marks among German

consumers.

Citigroup, Inc. and Citibank, NA v OHIM (CFI)

The CFI upheld the appeal of OHIM against one of its Board

of Appeal decisions, finding that there was a similarity

between a figurative mark...