Keywords
Summary

Keywords

1. Community trade mark – Surrender, revocation and invalidity – Relative grounds of invalidity – Existence of an identical or similar earlier trade mark registered for identical or similar goods or services – Likelihood of confusion with the earlier trade mark – Proprietor of the contested Community trade mark owning an identical trade mark with priority over earlier trade mark – No effect

(Council Regulation No 40/94, Arts 8(1)(b), and (2), and 52(1)(a))

2. Community trade mark – Procedural provisions – Examination of the facts by OHIM of its own motion – Cancellation proceedings – Examination restricted to the submissions of the parties – Obligation on the parties to state facts and evidence in support

(Council Regulation No 40/94, Arts 52 and 74(1))

3. Community trade mark – Appeals procedure – Appeal brought against a decision of a unit of the Office – Examination by Board of Appeal – Scope – Opposition or cancellation proceedings – Examination restricted to the submissions of the parties

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

4. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an identical or similar earlier mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Word marks TELETECH GLOBAL VENTURES and TELETECH INTERNATIONAL

(Council Regulation No 40/94, Art. 8(1)(b))

Summary

1. Whereas the Office for Harmonisation in the Internal Market (Trade Marks and Designs) is required in invalidity proceedings, as provided for by Article 52(1)(a) of Regulation No 40/94 on the Community trade mark, to satisfy itself as to the existence of the earlier right on which the application for a declaration of invalidity is based, none of the provisions of the regulation provides that OHIM itself is to carry out an incidental assessment of the grounds for invalidity or of defects which may invalidate that right. Furthermore, Regulation No 40/94 does not provide that the existence in the same territory of a trade mark with an earlier priority date than that of the earlier trade mark on which the application for a declaration of invalidity is based and which is identical to the contested Community trade mark can validate the latter even if there is a relative ground for cancellation of that Community trade mark.

Therefore, the fact that the proprietor of the contested Community trade mark is the proprietor of an identical trade mark which is well known in the territory in question and which has priority over the earlier mark has no legal consequences, given the wording of Regulation No 40/94.

(see paras 29-30)

2. Article 74(1) in fine of Regulation No 40/94 on the Community trade mark, in proceedings relating to relative grounds for refusal of registration, stipulates that the Office for Harmonisation in the Internal Market (Trade Marks and Designs) is to be restricted in its examination to the facts, evidence and arguments provided by the parties and to the relief sought. Whilst the wording of that provision could perhaps be interpreted as referring only to opposition procedures, the relative grounds for invalidity laid down in Article 52 of Regulation No 40/94 refer expressly to Article 8 of the same regulation, which defines the relative grounds for refusal of registration. As with the relative grounds for refusal of registration in opposition proceedings, the relative grounds for invalidity are considered by the Office only at the request of the proprietor of the earlier mark in issue. Consequently, invalidity proceedings involving a relative ground for invalidity are, in principle, governed by the same principles as opposition proceedings. In particular, it is for the parties to ensure that they adduce the necessary matters of fact and evidence. Thus Article 74(1) in fine of Regulation No 40/94 also applies to cancellation proceedings involving a relative ground for invalidity according to Article 52 of the regulation.

(see paras 64-65)

3. It follows from the principle of continuity of functions as between the Boards of Appeal and the units of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) ruling at first instance that the former are bound to consider whether or not, in the light of all the relevant matters of fact and of law, a new decision with the same operative part as the decision under appeal may be lawfully adopted at the time of the appeal ruling. However, in proceedings concerning the relative grounds for refusal of registration or for invalidity, the continuity of functions does not entail the obligation or even the opportunity for the Board of Appeal to extend its consideration of a relative ground for invalidity to facts, evidence or arguments which the parties have not invoked either before the Cancellation Division or the Board of Appeal.

(see para. 69)

4. For the target public composed of directors or managers of large or small undertakings in France who have a better than average knowledge of English, there is a likelihood of confusion between the word sign TELETECH GLOBAL VENTURES, which has been registered as a Community trade mark for ‘Telephone answering services; multimedia services (provided) for customers of other businesses; comprising telephone, electronic mail, and global computer network services to assist other businesses in the sales of their goods and services; assisting other businesses in offering their goods and services for sale or lease by telephone, electronic mail, and global computer network; receiving and responding to telephone, electronic mail, and global computer network inquiries from customers of other businesses;’ and ‘telecommunications services’ falling within Classes 35 and 38 of the Nice Agreement, and the word mark TELETECH INTERNATIONAL registered earlier in France for ‘engineering services in relation to business or advertising management, and management of customer service centres and/or telephone call centres (management of customer files, services, orders, software support, technical support, call centre organisation) and any services related to the above’ which fall within the same Classes, to the extent that the services designated by the marks in issue are partly identical and partly similar, and to the extent that the disputed signs are also similar, the word ‘teletech’ will be perceived by target consumers as being the dominant element of the Community trade mark and of the earlier French mark. A consumer, faced with the marks in issue, would remember above all the word ‘teletech’ which appears at the beginning of each, and might directly confuse one for the other.

(see paras 78-79, 96-97)