IPKat friend Tibor Gold has written details of last week's CFI decisions, thus far available only in French:
The BIC cases
The 2 BIC cases T-262/04 and 263/04, are 99% identical. They each concern the 3-D shape of a disposable smoker’s lighter.
Usual lip service that all signs are equal but the public is not so used to perceiving shapes as badges of origin. Nor is the average consumer likely to be attentive to the small details of lighters that BIC tried to rely on for distinctiveness under Art.7(1)(b) CTMR.
The lengthier part of each judgment centred on Art.7(3) – acquired distinctiveness. Here BIC failed because:
1. BIC could not [be bothered to?] supply adequate support for its allegations of massive sales and being the market leader in disposable lighters;
2. It provided no or very little proof in ‘substantial parts of the EC’ viz. German-speaking countries and English-speaking countries;
3 . Much of the evidence it did provide came for ‘connected persons’ such as its own distributors and own retail outlets which therefore could not be given full weight as compared to independent sources; and finally
4. [à la Jacob in Philips v Remington, limping TM needing the crutch of a word] Much of the evidence it did provide had the word BIC alongside so the use was not use of the shape alone as a TM.
CLEN/CLEAN.X
T-263/04: the owners of 2 Spanish national TM registrations for a label mark with CLEN as the dominant word in them opposed a CTM appl’n for clean·x. The goods were in class 3 and essentially the same, cleaning products.
The opposition was rejected by the OD and by the BoA and now by the CFI: the relevant av. consumer was Spanish and s/he would not confuse the signs, mainly because they do not know English and there is the important and non-negligible extra letter ‘a’ as well as the final, visually and phonetically strong ‘x’. The latter makes all the difference even if the av. consumer does understand the English word ‘clean’.
Moreover, in Spanish the name of the letter ‘x’ is pronounced ‘eh-kiss’ (written as ‘equis’) so the phonetic comparison is klehn (1 syllable) and kleh-ahnn-eh-kiss (4 syllables)!
Thus no error, distortion or illegality was seen in the BoA decision.
The IPKat says thanks Tibor! The IPKat notes that the standard required in the BIC decision is quite a tough one for applicants for shape marks to meet, since often they will have sold their shaped products under the mark, or with the mark on them.