“Class 35 Accountancy services; forensic accountancy, including fraud determination and fraud research; internal and external auditing; book-keeping; tax research; tax preparation; administrative services and consults related thereto; consults related to secretarial services; business investigations; commercial business investigations and commercial business consults related to insolvent companies; incorporation of companies; providing commercial and commercial business information, whether or not on-line; costs analysis and consults related thereto; providing temporary management into an organization, so-called interim management; business management assistance and consults; market research, market studies and market analysis; business management and organization consultancy; commercial business consults for companies; consults in the field of business efficiency; consults in the field of marketing; consults related to mergers, acquisitions, franchising, company liquidation and sales of companies; consults in the field of commercial risk management and commercial process management; personnel management, selection and recruitment; seconding personnel; consults in the field of personnel; personnel dismissing counselling. Class 36 Fiscal assessments; consults related to fiscal matters; consults related to credit checks and debtor checks; actuarial services and consults related thereto; financial and fiscal research; consults in the field of investments; consults in the field subsidies; consults in the field of (obtaining) financing and loans; consults in the field of company financing; consults in the field of financial matters and taxes; real estate appraisal; real estate management; consults in the field of insurance and risk management; pension services; management of pension funds; debt collection services; trust services; providing (whether or not on-line) information in the field of insurance, financial matters and fiscal matters. Class 42 … arbitration and mediation …”
“Article 4 Signs of which a Community trade mark may consist A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings Article 7 Absolute grounds for refusal 1. The following shall not be registered: (a) signs which do not conform to the requirements of Article 4; … Article 9 Rights conferred by a Community trade mark 1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: (a) any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered; (b) any sign where, because of its identity with or similarity to the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark; (c) any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark. 2. The following, inter alia, may be prohibited under paragraph 1: … (d) using the sign on business papers and in advertising. Article 12 Limitation of the effects of a Community trade mark A community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade: (a) his own name or address; … provided he uses them in accordance with honest practices in industrial or commercial matters. Article 15 Use of Community trade marks 1. If, within a period of five years following registration, theproprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use. The following shall also constitute use within the meaning of the first subparagraph: (a) use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered; (b) affixing of the Community trade mark to goods or to the packaging thereof in the Community solely for export purposes. 2. Use of the Community trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor. Article 51 Grounds for revocation 1. The rights of the proprietor of the Community trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings: (a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; however, no person may claim that the proprietor's rights in a Community trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application or counterclaim, genuine use of the trade mark has been started or resumed; the commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed; … 2. Where the grounds for revocation of rights exist in respect of only some of the goods or services for which the Community trade mark is registered, the rights of the proprietor shall be declared to be revoked in respect of those goods or services only. Article 52 Absolute grounds for invalidity 1. A Community trade mark shall be declared invalid in application to the Office or on the basis of a counterclaim in infringement proceedings: (a) where the Community trade mark has been registered contrary to the provisions of Article 7; … Article 55 Consequences of revocation and invalidity 1. The Community trade mark shall be deemed not to have had, as from the date of the application for revocation or of the counterclaim, the effects specified in this Regulation. An earlier date, on which one of the grounds for revocation occurred, may be fixed in the decision at the request of one of the parties. … Article 100 Counterclaims 1. A counterclaim for revocation or for a declaration of invalidity may only be based on the grounds for revocation or invalidity mentioned in this Regulation. … Article 101 Applicable law … 3. Unless otherwise provided in this Regulation, a Community trade mark court shall apply the rules of procedure governing the same type of action relating to a national trade mark in the Member State in which the court is located.”
“… definitions of services, which I think cover six of the classifications in the respect of which trade marks can be registered, are inherently less precise than specifications of goods. The latter can be, and generally are, rather precise, such as ‘boots and shoes’. In my view, specifications for services should be scrutinised carefully and they should not be given a wide construction covering a vast range of activities. They should be confined to the substance, as it were, the core of the possible meanings attributable to the rather general phrase.”
“[The Directive] must be interpreted as meaning that it requires the goods and services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark.”
“80. As a preliminary point, it is appropriate to observe, first, that the purpose of Article 2 of the Directive is to define the types of signs of which a trade mark may consist (Case C-273/00 Sieckmann[2002] ECR I-11737 , paragraph 43), irrespective of the goods or services for which protection might be sought (see to that effect Sieckmann, paragraphs 43 to 55, Libertel, paragraphs 22 to 42, andCase C-283/01 Shield Mark[2003] ECR I-0000 , paragraphs 34 to 41). It provides that a trade mark may consist inter alia of ‘words’ and ‘letters’, provided that they are capable of distinguishing the goods or services of one undertaking from those of other undertakings. 81. In view of that provision, there is no reason to find that a word like ‘Postkantoor’ is not, in respect of certain goods or services, capable of fulfilling the essential function of a trade mark, which is to guarantee the identity of the origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin (see, in particular,Case C-39/97 Canon[1998] ECR I-5507 , paragraph 28, Merz & Krell, paragraph 22, and Libertel, paragraph 62). Accordingly, an interpretation of Article 2 of the Directive appears not to be useful for the purposes of deciding the present case.”
“45. It follows from the provisions cited above that, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition. 46. Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.”
“54 Although at first blush this suggests an approach which is somewhat different to that laid down by the English authorities considered in NIRVANA, I consider that the difference is smaller than might appear. The essence of the domestic approach is to consider how the average consumer would fairly describe the goods in relation to which the trade mark has been used. Likewise, paragraph [29] of Mundipharma indicates that the matter is to be approached from the consumer's perspective. 55 To the extent that there is a difference between them, I remain of the view expressed in NIRVANA that I am bound by the English authorities interpreting section 46(5) of the 1994 Act and Article 13 of the Directive and not by the CFI's interpretation of Article 46(2) of the CTM Regulation since, as already noted above, there are differences between the two legislative contexts. Nevertheless I consider that English tribunals should endeavour to follow the latter so far as it is open to them to do so. Mundipharma suggests that, within the spectrum of domestic case law, the slightly more generous approach of Jacob J. in ANIMAL Trade Mark[2003] EWHC 1589 (Ch) ,[2004] FSR 19 is to be preferred to the slightly less generous approach of Pumfrey J. in DaimlerChrysler AG v Alavi[2001] RPC 42 .”
“… the aim should be to arrive at a fair specification by identifying and defining not the particular examples of goods for which there has been genuine use, but the particular categories of goods they should realistically be taken to exemplify. …”
“For that purpose the terminology of the resulting specification should accord with the perceptions of the average consumer of the goods or services concerned.”
“administrative services and consults related thereto” will be limited to “administrative services in the accounting, financial, insolvency and tax fields and consults related thereto”; “consults related to secretarial services” will be limited to “consults related to company secretarial services”; “consults in the field of commercial risk management and commercial process management” will be limited to “consults in the field of commercial risk management and commercial project management”; “consults related to fiscal matters” and “consults in the field of financial matters and taxes” will be limited to “consults in the fields of corporate finance and taxes”; “debt collection services” will be deleted; and “arbitration and mediation” will be limited to “mediation”
“17. The proprietor’s right to protection of his mark from infringement is neither genuine nor effective if account may not be taken of the perception of the public concerned at the time when the sign, the use of which infringes the mark in question, began to be used. 18. If the likelihood of confusion were assessed at a time after the sign in question began to be used, the user of that sign might take undue advantage of his own unlawful behaviour by alleging that the product had become less renowned, a matter for which he himself was responsible or to which he himself contributed. 19. Article 12(2)(a) of Directive 89/104 provides that a trade mark is liable to revocation if, after the date on which it was registered, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service in respect of which it is registered. Thus, by balancing the interests of the proprietor against those of his competitors in the availability of signs, the legislator considered, in adopting this provision, that the loss of that mark’s distinctive character can be relied on against the proprietor thereof only where that loss is due to his action or inaction. Therefore, as long as this is not the case, and particularly when the loss of the distinctive character is linked to the activity of a third party using a sign which infringes the mark, the proprietor must continue to enjoy protection. 20. In the light of all the foregoing, the answer to the first and second questions must be that Article 5(1) of Directive 89/104 must be interpreted as meaning that, in order to determine the scope of protection of a trade mark which has been lawfully acquired on the basis of its distinctive character, the national court must take into account the perception of the public concerned at the time when the sign, the use of which infringes that trade mark, began to be used.”
“Where the competent national court finds that the sign in question constituted an infringement of the mark at the time when the sign began to be used, it is for that court to take such measures as prove to be the most appropriate in the light of the circumstances of the case in order to safeguard the proprietor’s rights deriving from Article 5(1) of Directive 89/104; such measures may include, in particular, an order to cease use of that sign.”
“33. … where a trade mark has lost its distinctive character in consequence of acts or inactivity of the proprietor so that it has become a common name within the meaning of Article 12(2) of Directive 89/104, its proprietor can no longer assert the rights conferred on him under Article 5 of that directive. … 36. Accordingly, after revocation in the particular case has been established, the competent national court cannot order cessation of the use of the sign in question, even if, at the time when that sign began to be used, there was a likelihood of confusion between the sign and the mark concerned. 37. Consequently, the answer to the fourth question must be that it is not appropriate to order cessation of the use of the sign in question if it has been established that the trade mark has lost its distinctive character, in consequence of acts or inactivity of the proprietor, so that it has become a common name within the meaning of Article 12(2) of Directive 89/104 and the trade mark has therefore been revoked.”
“61. Whilst recognising those principles, eBay submits that the proprietor of a trade mark registered in a Member State or of a Community trade mark cannot properly rely on the exclusive right conferred by that trade mark as long as the goods bearing it and offered for sale on an online marketplace are located in a third State and will not necessarily be forwarded to the territory covered by the trade mark in question. L’Oréal, the United Kingdom Government, the Italian, Polish and Portuguese Governments, and the European Commission contend, however, that the rules of Directive 89/104 and Regulation No 40/94 apply as soon as it is clear that the offer for sale of a trade-marked product located in a third State is targeted at consumers in the territory covered by the trade mark. 62. The latter contention must be accepted. If it were otherwise, operators which use electronic commerce by offering for sale, on an online market place targeted at consumers within the EU, trade-marked goods located in a third State, which it is possible to view on the screen and to order via that marketplace, would, so far as offers for sale of that type are concerned, have no obligation to comply with the EU intellectual property rules. Such a situation would have an impact on the effectiveness (effet utile) of those rules. 63. It is sufficient to state in that regard that, under Article 5(3)(b) and (d) of Directive 89/104 and Article 9(2)(b) and (d) of Regulation No 40/94, the use by third parties of signs identical with or similar to trade marks which proprietors of those marks may prevent includes the use of such signs in offers for sale and advertising. As the Advocate General observed at point 127 of his Opinion and as the Commission pointed out in its written observations, the effectiveness of those rules would be undermined if they were not to apply to the use, in an internet offer for sale or advertisement targeted at consumers within the EU, of a sign identical with or similar to a trade mark registered in the EU merely because the third party behind that offer or advertisement is established in a third State, because the server of the internet site used by the third party is located in such a State or because the product that is the subject of the offer or the advertisement is located in a third State. 64. It must, however, be made clear that the mere fact that a website is accessible from the territory covered by the trade mark is not a sufficient basis for concluding that the offers for sale displayed there are targeted at consumers in that territory (see, by analogy, Joined Cases C-585/08 and C-144/09 Pammer and Hotel Alpenhof[2010] ECR I-0000 , paragraph 69). Indeed, if the fact that an online marketplace is accessible from that territory were sufficient for the advertisements displayed there to be within the scope of Directive 89/104 and Regulation No 40/94, websites and advertisements which, although obviously targeted solely at consumers in third States, are nevertheless technically accessible from EU territory would wrongly be subject to EU law. 65. It therefore falls to the national courts to assess on a case-by-case basis whether there are any relevant factors on the basis of which it may be concluded that an offer for sale, displayed on an online marketplace accessible from the territory covered by the trade mark, is targeted at consumers in that territory. When the offer for sale is accompanied by details of the geographic areas to which the seller is willing to dispatch the product, that type of detail is of particular importance in the said assessment.”
“the trader must have manifested its intention to establish commercial relations with consumers from one or more other Member States, including that of the consumer’s domicile”
“The following matters, the list of which is not exhaustive, are capable of constituting evidence from which it may be concluded that the trader’s activity is directed to the Member State of the consumer’s domicile, namely the international nature of the activity, mention of itineraries from other Member States for going to the place where the trader is established, use of a language or a currency other than the language or currency generally used in the Member State in which the trader is established with the possibility of making and confirming the reservation in that other language, mention of telephone numbers with an international code, outlay of expenditure on an internet referencing service in order to facilitate access to the trader’s site or that of its intermediary by consumers domiciled in other Member States, use of a top-level domain name other than that of the Member State in which the trader is established, and mention of an international clientele composed of customers domiciled in various Member States. It is for the national courts to ascertain whether such evidence exists.”
“10. Homes & Gardens is a United Kingdom published magazine. The defendants had a single full page colour advertisement. At the top in large letters are words ‘Crate & Barrel’, beneath are two colour photographs, beneath them is the word “Dublin”, in the same large size and lettering. One reads the words naturally as ‘Crate & Barrel, Dublin’. In much smaller letters the advertisement goes on to say ‘soft furnishings: Orior by Design, furniture: Chalon’. In even smaller print at the bottom, the advertisement says ‘sofas, tableware, beds, lighting accessories’. Underneath that a website address is given, ‘www.crateandbarrel-ie.com.’ ‘ie’ is webspeak for Ireland. A telephone/fax number is given with the full international code for Ireland. 11. Ms Peters says the advertisement was placed on the recommendation of the furniture supplier, Chalon. It was Chalon who actually placed the advertisement because they could get a better rate. Homes & Gardens was chosen because it is widely sold in the Republic and there is no exclusively Irish high quality interior furnishings magazine. The international dialling code was the idea of the photographer who caused it to be used on his own initiative and without the knowledge of Ms Peters. She says that although she knew that Homes & Gardens has a substantial United Kingdom circulation, she never expected or intended to obtain United Kingdom customers. She says the defendants have never sold any products in or to the United Kingdom. Doubtless they have sold some products in their Dublin shop to visitors from the United Kingdom.”
“16. … I think there must be an inquiry as to what the purpose and effect of the advertisement in question is. In the present case, for example, the advertisement tells a reader, who knows nothing more, that there is an enterprise called ‘Crate & Barrel’ in Dublin dealing with the goods mentioned. It is probably a shop, for these are not the sort of goods one would order only by mail. Normally, of course, an advertisement placed in a United Kingdom magazine is intended to drum up United Kingdom business and will do so. This is so whether the advertisement is for goods or for a service or shop. But this is not a normal case. This is an advertisement for an Irish shop in a magazine which has an Irish and United Kingdom circulation. …. 18. … It is Article 5 which sets out the obligatory and optional provisions as to what constitutes infringement. It is Article 5 which uses the expression ‘using in the course of trade … in relation to goods or services’ from which section 10 of the United Kingdom Act is derived. 19. The phrase is a composite. The right question, I think, is to ask whether a reasonable trader would regard the use concerned as ‘in the course of trade in relation to goods’ within the Member State concerned. Thus if a trader from state X is trying to sell goods or services into state Y, most people would regard that as having a sufficient link with state Y to be ‘in the course of trade’ there. But if the trader is merely carrying on business in X, and an advertisement of his slips over the border into Y, no businessman would regard that fact as meaning that he was trading in Y. This would especially be so if the advertisement were for a local business such as a shop or a local service rather than for goods. I think this conclusion follows from the fact that the Directive is concerned with what national law is to be, that it is a law governing what traders cannot do, and that it is unlikely that the Directive would set out to create conflict within the internal market. … One needs to ask whether the defendant has any trade here, customers buying goods or services for consumption here. …”
“When BDO Unibank, Inc (BDO) coined the dictum ‘We find ways’ many years back, the Bank’s intent was to make it fitting not only for local clients but for local investors who view the Philippines as a potential hub.”
“In assessing the similarity of the goods or services concerned … all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary.”
“An absolute outer limit of similarity exists. An absolute borderline must be drawn between goods/services that are similar and those that are dissimilar. This means that one and the same pair of goods and services always are either within or outside that borderline. A definition of the outer limit is required for several reasons: First, there is a need for legal certainty. Second, where the products are dissimilar, the earlier mark can be a basis for refusal of the CTM application only under the conditions set out in Art. 8(5). Those conditions confer enhanced protection on marks with reputation. It is often difficult to establish that the conditions, which include an unfair advantage or a detriment to the distinctive character or the repute of the earlier mark, are met. Third, it is desirable that the assessment of goods and services by the Office and by the relevant authorities of the Member States run in parallel. For Member States’ trade mark authorities it will become indispensable to define an ‘absolute’ outer limit in the following two situations, which makes the need for the Office to make this definition as well obvious: Where the Member State does not provide enhanced protection for marks with reputation. Art. 4(4)(a) of the TM Directive leaves it up to the discretion of the Member States to do so. Furthermore, a Member State may choose to provide such enhanced protection only for cancellation and infringement but not for opposition proceedings. (Germany, e.g., has done so.) The definition of the borderline between (remotely) similar and dissimilar goods and services must be based on the following test: The goods and services are similar if, supposing identical marks, the public could believe that they come from the same or economically-linked undertakings.”