Keywords

Summary



Keywords

1. Community trade mark – Procedural provisions – Examination of the facts of the Office’s own motion – Registration of a new trade mark – Need for a thorough examination

(Council Regulation No 40/94, Art. 74(1), first sentence)

2. Community trade mark – Appeals procedure – Appeal brought against a decision of a unit of the Office ruling at first instance and referred to the Board of Appeal – Examination of the appeal by the Board of Appeal – Taking account of additional evidence submitted after the expiry of the prescribed period within which a written statement setting out the grounds of appeal must be filed

(Council Regulation No 40/94, Arts 59 and 74(2))

3. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks composed exclusively of signs or indications which may serve to designate the characteristics of goods – Word mark ROCKBASS

(Council Regulation No 40/94, Art. 7(1)(c))

Summary

1. It follows from the first sentence of Article 74(1) of Regulation No 40/94 on the Community trade mark that during the procedure for registration of a mark the examination carried out by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) must be a stringent and full examination, in order to prevent trade marks from being improperly registered. For reasons of legal certainty and proper administration, it is necessary to ensure that trade marks whose use could successfully be challenged before the courts are not registered.

(see para. 20)

2. Under the third sentence of Article 59 of Regulation No 40/94 on the Community trade mark, in appeals against decisions of the examiners, a written statement setting out the grounds of appeal must be filed within four months after the date of notification of the decision.

That provision cannot be construed as preventing new facts or evidence submitted during the hearing of an appeal on an absolute ground for refusal from being taken into account after the expiry of the prescribed period within which the grounds of appeal must be presented. Article 74(2) of Regulation No 40/94, which provides that the Office for Harmonisation in the Internal Market (Trade Marks and Designs) may disregard facts or evidence which are not submitted in due time by the parties concerned, allows the Board of Appeal discretion in taking into account additional evidence produced after that period has expired.

In addition, in so far as the procedure for examining absolute grounds for refusal before the Boards of Appeal makes no provision for a specific period after the expiry of which the parties may no longer rely effectively on new facts or produce additional arguments, a Board of Appeal must therefore examine any additional written statement in order to ensure, at the very least, that it does not contain any new facts or evidence to be considered having regard to Article 74(2) unless, when the additional written statement is received, the Board of Appeal’s decision has been adopted and the Board of Appeal is therefore no longer, in practical terms, in a position to take it into account. Further, the Office cannot merely contend that considerations relating to its administrative organisation did not allow the written statement in question to be brought to the attention of the Board of Appeal.

(see paras 28-31)

3. The word sign ROCKBASS, in respect of which registration is sought for ‘Technical sound equipment, mixing desks, sound effect equipment, amplifiers, loudspeaker boxes, active loudspeaker boxes (combos); containers, cases and bags for the aforesaid goods’, ‘Musical instruments, in particular guitars, electric guitars, bass guitars, acoustic guitars, guitar accessories, namely strings, frets, truss rods and straps; containers, cases and bags for the aforesaid goods’, and ‘Containers, cases and bags’ in Classes 9, 15 and 18 respectively of the Nice Agreement, falls within the scope of the prohibition under Article 7(1)(c) of Regulation No 40/94 on the Community trade mark in so far as the link between that sign and the characteristics of all the goods referred to in the application for registration is, from the point of view of an English-speaking public composed of professional and amateur musicians who do not necessarily have specific technical knowledge, sufficiently close.

(see paras 52-53, 75)