Keywords

Summary



Keywords

1. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusing registration — Opposition by the holder of an earlier identical or similar mark registered for identical or similar goods or services — Risk of confusion with the earlier mark — Word marks TUFFTRIDE and NU-TRIDE — (Council Regulation No 40/94, Art. 8(1)(b))

2. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Scope — Relative grounds for refusing registration, not including absolute grounds put forward in third parties ' observations — (Council Regulation No 40/94, Arts 7, 8, 41, 42 and 43; Commission Regulation No 2868/95, Art. 1, Rule 20(6))

3. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusing registration — Trade marks contrary to public policy or accepted principles of morality — Scope — Applicant acting in bad faith — Not covered — (Council Regulation No 40/94, Art. 7(1)(f))

Summary

1. For the relevant public, composed of a limited number of highly specialised operators in Germany in the treatment of metals through chemical processes, there is no risk of confusion between the word mark " NU-TRIDE" , for which registration as a Community mark is sought in respect of " chemicals, none consisting of or containing cyanide, all for use in the treatment of metals" and " metal treatment, not including the use or application of cyanide" , coming within Classes 1 and 40 of the Nice Agreement, and the mark " TUFFTRIDE" , registered earlier in Germany for products within Classes 1, 7 and 11 of the Nice Agreement and corresponding to the following description: " Inorganic salts, particularly alkali cyanide and alkali cyanate for metal treatment, salt bath furnaces together with accessories, namely pyrometers for the measurement of the temperature of the nitriding bath, exhaust hoods and fans for the elimination of exhaust gases, air intakes and compressors for the ventilation of the baths, equipments to remove the sediments deposited in the baths, all of these devices intended for the nitriding treatment of steel and steel parts" .

Although the goods and services covered by the mark for which registration is sought are similar to the goods covered by the earlier mark, the degree of similarity between the marks in question is not sufficiently high for a finding that there is a likelihood of confusion between them. That conclusion is corroborated by the fact that the relevant public is likely to take great care in the selection of those goods and services.

see paras 37, 40, 52

2. It follows from the wording of Article 42(1), and from the structure of Article 42 and 43 of Regulation No 40/94 on the Community trade mark, that the absolute grounds for refusal contained in Article 7 of that regulation do not fall to be examined as part of the opposition procedure. The grounds on which an opposition may be based, as laid down in Article 42(1) of Regulation No 40/94, are merely the relative grounds for refusal in Article 8 of that regulation. Those are the terms on which OHIM is required to give a decision on the opposition under Article 43(5) of that regulation.

Whilst it is true that, under Article 41(1) of Regulation No 40/94, third parties may submit observations to OHIM concerning, inter alia, absolute grounds of refusal, it is not in the context of opposition proceedings that OHIM has to take account of those observations, even if observations by third parties are submitted in the course of an opposition procedure. Faced with such a situation, OHIM may suspend the opposition proceeding pursuant to Rule 20(6) of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark.

see paras 72-73

3. The requirement of Article 7(1)(f) of Regulation No 40/94 on the Community trade mark, namely that the trade mark must be contrary to public policy and to accepted principles of morality, does not cover the situation in which the trade mark applicant acts in bad faith. An overall reading of the various subparagraphs of Article 7(1) of Regulation No 40/94 shows that they refer to the intrinsic qualities of the mark claimed and not to circumstances relating to the conduct of the person applying for the trade mark.

see para. 76