Two recent cases decided by the European Court of Justice, Alfred Strigl v Deutsches Patent-und Markenamt (C-90/11) and Securvita v Öko-Invest (C-91/11)), provide an important lesson in European trade mark practice.
In the first case, Mr Strigl had filed a German trade mark application for the mark Multi Markets Fund MMF in respect of a range of financial services in Class 36. The German Patent and Trade Mark Office (GPTO) objected to the mark as non-distinctive and descriptive. Mr Strigl appealed to the German Federal Patent Court.
In the second case Öko-Invest applied to cancel a German trade mark registration owned by Securvita for the mark NAI-Der Natur-Aktien-Index (in English, The Nature Shares Index) covering Class 36 services. The grounds of cancellation were that the mark was non-distinctive/descriptive in respect of the services claimed. The GPTO cancelled the registration on the grounds raised by Öko-Invest. Securvita appealed to the German Court.
Faced with these virtually identical cases, the German Court asked the ECJ for a ruling on whether a trade mark which is a combination of
• A non-distinctive/descriptive phrase; and
• A distinctive/non-descriptive acronym of that phrase
was overall a non-distinctive and/or descriptive trade mark under Article 3(1)(b) and (c) of the Trade Mark Harmonisation Directive (2008/95/EC).
The Court ruled that marks such as those in the present cases, where the letter combination (MMF/NAI) reproduced the first letter of each word in the respective phrases (Multi Markets Fund/Der Natur Aktien Index) were devoid of distinctive character, when considered as a whole.
These are poor decisions from the ECJ. It simply cannot be right that distinctive trade marks such as BBC, BMW and UPS become objectionable simply because the mark applied for is combined with British Broadcasting Corporation, Bayerische Motoren Werke or United Parcel Service.
If the acronym in question has already become a widely accepted acronym for a descriptive phrase, such as GPS (Global Positioning System), then an objection of the type envisaged by the ECJ would be acceptable. However, if that is not the position and the acronym is a new three (or two, four etc) letter mark for a non-distinctive/descriptive phrase that has been coined by the trade mark applicant, for example ENB- Exceptionally Nice Beer, then why shouldn't the mark be acceptable, given the distinctiveness of ENB?
Further, what effect does this ruling have on trade mark registrations for distinctive acronyms that are used with non-distinctive phrases? For example, let's say that the trade mark AST is registered for pharmaceutical preparations. However, the owner of the mark uses the acronym with the coined phrase Advanced Skin Therapy. Even if no third party takes up the same acronym for the same phrase, does that place a question mark over the validity of the trade mark registration? It certainly should not.
Unfortunately, EU trade mark practitioners, as well as the owners of EU trade mark rights, have to live with the often eccentric and inconsistent pronouncements of the ECJ. In this case, it is clear that, if a client proposes a trade mark which consists of a distinctive acronym and a non-distinctive phrase, then the phrase should be removed from the mark as filed and any non-distinctive use of the acronym by third parties, in respect of the goods or services at issue, should be resisted.
Another important point of CTM practice, that is how to monopolise a non-distinctive term and then enforce that right against third parties, has been reaffirmed in a decision of the (European) General Court (Sport Eybl & Sports Experts v Seven SpA; T-179/11).
The CTM applicant (Sport Eybl) applied to register the figurative trade mark Seven Summits (see above) in respect of a variety of Class 18 goods. The CTM application was opposed by the Italian company, Seven SpA, on the basis of an earlier CTM registration for a stylised form of the word mark Seven covering identical and similar Class 18 goods.
The opposition was upheld by the OHIM Opposition Division and the Fourth Board of Appeal. This, in spite of the fact that the Board of Appeal found only a "very low degree" of visual similarity between the marks. Unfortunately for the CTM applicant this was overwhelmed by " a medium degree" of aural similarity and "some" conceptual similarity (between the two marks) and the identity/similarity of the two sets of goods.
Sport Eybl appealed to the (European) General Court, but to no avail. Finding it impossible to look beyond the facts that both marks contained the word Seven and that Seven was the first word in the CTM mark applied for, the Court agreed with the findings of the Board of Appeal. The fact that the CTM applicant did not provide evidence to establish that the word Summits was distinctive in respect of the Class 18 goods claimed meant, according to the Court, that there were no grounds "for finding that that word is capable of playing a decisive role in the conceptual differentiation of the signs at issue". The Court was also willing to accept the finding of the Opposition Division and the Board of Appeal that the opponent's mark (Seven, stylised) had a "normal" distinctive character. Finally, the Court stated that, when a trade mark includes an earlier trade mark in its entirety, and adds another word to it, it is a strong indication that the marks are similar.
Well, not always it isn't. Certainly it shouldn't be when the earlier mark is one of little or no distinctiveness. It remains the CTM Office's practice to treat applications for unstylised single numerals as non-distinctive in respect of goods. This is justified in view of the limited number of numerals available for other traders. Given the aural and conceptual identity of such marks (unstylised single numerals), when written as a numeral or when written as a word, the same practice should also apply to numerals, when written as words. It should therefore be assumed that Seven (stylised) for Class 18 goods is a mark of limited or no distinctiveness. It follows that the only dominant feature of the trade mark Seven (stylised) mark is its stylised form, a form that is not found in the opposed mark.
To that assumption, in the Sport Eybl case, should be added the assumption that the purchase of Class 18 goods, in the same manner as Class 25 goods, is predominantly a visual experience. Given that everyone, except the opponent, appears to have accepted that there was very little visual similarity between the two marks in the Sport Eybl case, this should have been a compelling reason to find that there was no confusion. As to the conceptual comparison of the two marks, what really strikes one in the CTM mark applied for is the stylised nature of the word SUMMIT, the two letter Ms having the appearance of mountains. It is submitted that this (the idea of mountains) is the predominant concept of the opposed mark, a concept that is completely absent from the earlier mark of the opponent. It follows, in the writer's view, that on a global assessment, there would be virtually no chance of any confusion between the two marks (Seven Summits (figurative) and Seven (stylised)) in the EU market for the Class 18 goods of interest.
Having said that, one can only admire the opponent's efforts, first to protect and then to monopolise the non-distinctive word Seven for Class 18 goods. Here are the rules of the game for the owners of such signs. First, register a stylised version of the non-distinctive sign. Second, oppose all later marks containing the non-distinctive sign, whether stylised or not. Third, rely on the CTM authorities' and the European Court's rigid and unimaginative views on the similarity of later trade marks that contain the same, non-distinctive sign. Relying on this practice, the opponent in the above case (Seven SpA) is conducting a spirited, and fairly successful, campaign to maintain a monopoly in Class 18 on the CTM register in marks containing the non-distinctive sign Seven.
The (European) General Court case between Cadila Healthcare and Novartis (T-288/08) considered the effect of the non-renewal of an earlier trade mark right on the outcome of a CTM opposition.
In 2003, Cadila had applied for the trade mark Zydus for a wide range of Class 5 products. The application was published in April 2004. The CTM application was opposed by Novartis on the basis of an earlier CTM registration (dated August 2001) for Zimbus claiming pharmaceutical preparations.
Cadila's CTM application was rejected in part by both the Opposition Division and the Board of Appeal, the latter refusing the application in respect of "pharmaceutical, veterinary and sanitary preparations". Cadila appealed to the General Court who dismissed the appeal. On the substance of the case, the Court found that the marks had "a certain degree of visual similarity" and, amongst at least some EU consumers, "a strong degree of phonetic similarity". When that was combined with no conceptual meaning for either mark, a finding of similarity between the two marks was inevitable.
Turning to the two sets of goods, the Court agreed with the Board of Appeal that Novartis' goods (pharmaceutical preparations) were identical with the CTM application's "pharmaceutical and veterinary preparations" and highly similar to its "sanitary preparations". In view of these findings, the Court was bound to find a likelihood of confusion and to reject the CTM application in relation to the same goods as the Board of Appeal. (As an aside, the finding of identity between pharmaceutical and veterinary preparations is quite wrong. However, such nonsense always has to be factored in when seeking to clear trade marks in Class 5 in the EU and is really no great surprise).
That was not the end of the matter however because, between the Board of Appeal publishing its decision in this opposition (7 May 2008) and the date of the General Court hearing (12 October 2011), Novartis' CTM registration for Zimbus had been allowed to lapse because of non-payment of the renewal fee (which had been due on 31 August 2011). This fact was brought to the attention of the Court who were asked to reject the opposition as a consequence of this development.
The Court was not persuaded to do so. Since Novartis' earlier CTM had been in force at the date of the Board of Appeal's decision, it constituted, according to the Court, a valid earlier right. This is an extremely important decision by the Court since Novartis now also owns a later CTM registration (dated September 2007) for the same mark, Zimbus in Class 5 which stands in the way of any later filings that Cadila might make for their trade mark Zydus.
The writer's reading of the General Court's decision in the Zydus case is that, if Novartis' earlier CTM (for Zimbus) had lapsed for non-renewal prior to the issuance of the Appeal Board's decision, then the opposition would have been rejected. Unfortunately that was not the position here.
What Cadila should have done in this case was to apply to revoke Novartis' CTM registration for non-use in February 2008 and then seek the suspension of the Zydus opposition, pending the outcome of that non-use revocation action. (Note that such suspension requests are not always granted, however. See, for example, the perverse decision of the Fourth Board of Appeal in the RENO 911! CTM opposition (R236/2008-4)). In addition, once they had lost the opposition in this case, Cadila should have refiled for their mark and delayed the publication of that new CTM application for Zydus until Novartis' earlier CTM for Zimbus moved out of its 5 year non-use period (in February 2008). Ever since Cadila failed to apply to revoke the earlier right and also failed to file a new CTM application, the opponent (Novartis) has played this dispute quite cutely. First, they set off a new non-use grace period for their own mark by filing (and obtaining a registration for) a new CTM for the trade mark Zimbus. Second, they have also allowed their earlier CTM registration for Zimbus to lapse which should prevent Cadila from seeking to revoke it. Cadila's only legal options now would seem to be
i) To apply to invalidate Novartis' new CTM registration for Zimbus on the ground that it was filed in bad faith (Article 52(1)(b) CTMR). This action would rely on the argument that no use of the trade mark Zimbus appears to have been made by Novartis since it filed its first CTM application for the mark in August 2001; and
ii) File a new CTM application for Zydus and hope that no damaging intervening rights appear from out of the trade mark woodwork.
Given the global ambitions of the Indian pharmaceutical company, Zydus Cadila, see the website www.zyduscadila.com, this dispute may have some legs yet.
The wide ranging rights attached to the names of well-known pop groups has been illustrated in two recent CTM oppositions.
In the first case, You-Q v Apple Corps (T-369/10), the mark applied for was Beatle in respect of Class 12 goods, in particular wheelchairs (electric and non electric) in Class 12. The CTM application was opposed by Apple Corps based on their earlier CTM and national trade mark rights in Beatles and The Beatles, both word marks and stylised marks. None of the goods or services covered by these earlier registrations would be considered identical with or similar to Class 12 goods.
The opponent, who owns the IP rights of the famous pop group, also relied on their reputation in (The) Beatles particularly in respect of sound records, video records and films (Article 8(5) CTMR).
The Opposition Division rejected the opposition, noting that no link between the goods for which the opponent had established a reputation through its evidence (namely sound records, video records and films) and the CTM applicant's Class 12 goods had been proved.
This decision was overturned by the Second Board of Appeal. The Board was persuaded by the similarity of the marks, the opponent's reputation in their marks, not only for sound records, video records and films, but also for merchandising products such as games and toys, and the fact that ageing Beatles' fans were precisely the type of consumer that would be targeted by You-Q, to reject the CTM application under Article 8(5) CTMR. You-Q's argument that the inspiration for their product name was the reputation of VW's Beetle was rejected as difficult to believe by the Board. It is also quite a dangerous line of argument, given the number of trade mark rights owned by Volkswagen for the trade mark Beetle in Class 12.
Given that You-Q actually use the trade mark Beatle for a powered wheelchair in Holland, it is perhaps unsurprising that they appealed to the (European) General Court. Unfortunately for the CTM applicant, the legal equivalent of Maxwell's Silver Hammer fell down upon their head. In confirming the rejection of the CTM application under Article 8(5) CTMR, the Court agreed with the Board of Appeal on the similarity of the marks and the extent of the substantial reputation of those marks. The Court also agreed that there would be overlap between the users of the CTM applicant's wheelchairs and the purchasers of Beatles' recordings, films and related merchandise. Finally the Court accepted the argument that, by associating its mark and goods with the positive images of youth, freedom and mobility that surrounded the opponent's trade marks, they would be free-riding on and taking unfair advantage of the reputation in (The) Beatles. The CTM applicant's argument that they had been using the trade mark Beatle for over 10 years and that this gave them the due cause required under Article 8(5) CTMR was rejected by the Court as it was raised for the first time before the Court rather than before OHIM.
The only previous association between The Beatles and Class 12 goods was probably the Rubber Soul track, Drive My Car. It remains to be seen whether or not Apple Corps will use this decision as a springboard to attack You-Q's use of the trade mark Beatle for wheelchairs. Given the adverse publicity that is likely to follow such an action, it may be wiser to stick with the maintenance of a clean trade mark register.
In the second case (Not Us v Spectrum Enterprise General Trading; CTM Opposition No. B1786766), a CTM application for the trade mark U2 for Class 34 goods, including tobacco, was opposed by the IP holding company for the well-known Irish rock group, U2. Once again the opponent relied on a variety of earlier trade mark registrations (for U2) for entertainment related merchandise and services, none of which was similar to Class 34 goods, as well as the group's significant reputation in U2 (Article 8(5) CTMR).
OHIM's Opposition Division accepted that the opponent's evidence established the group's reputation in the trade mark U2 for recordings and music entertainment services in the EU. They also accepted that the introduction of a U2 branded pack of cigarettes (or similar) would lead the relevant public to think that the product was controlled by or licensed by the group. The CTM applicant's U2 goods would therefore free-ride on the reputation of the group in the trade mark U2 and would take unfair advantage of that reputation. The Opposition Division also noted that the advertising of tobacco products was severely restricted in the EU and that, in such a market, the introduction of a U2 tobacco product would have an advantage over the launch of competing (tobacco) products, an advantage that would have been gained unfairly.
As a result, the opponent had The Edge in this opposition and the Opposition Division rejected the CTM application.
For reasons that are not immediately apparent to the writer, Red Bull energy drinks have become immensely popular and successful over the past 25 years. That success has been reinforced recently by their sponsorship of a championship winning Formula 1 racing team.
To those with an interest in trade marks, perhaps equally impressive has been Red Bull's campaign to maintain a monopoly, on the UK trade mark and CTM registers, not only in the trade mark Red Bull for energy drinks, but also in all trade marks containing either the word Red or the word Bull for such Class 32 products. Two more successes before the UK Trade Mark Office have been reported recently. In the first case, Stute Nahrungsmittelwerke vs Red Bull, the Austrian company applied to invalidate a Red Z logo mark registered for Class 32 goods, including energy drinks. Red Bull relied on an earlier UK trade mark registration for Red-X covering non-alcoholic drinks. They were also able to show limited use of this mark (sales of £65000 over a period of about nine months).
The Hearing Officer decided that the two marks were similar, particularly once imperfect recollection was taken into account. Stute had claimed continuous use of its mark in the UK since 2002 (it is still in use at the time of writing) and that, for nine months at least, their mark and Red Bull's mark had coexisted. The Hearing Officer took the view that, given the short period of coexistence and the small extent to which the opponent's Red-X product was sold, the capacity for confusion between the two energy drinks had not been tested.
On that basis Red Bull's application to invalidate Stute's UK trade mark registration for Red-Z logo succeeded. No doubt, Stute will feel extremely hard done by. Their UK trade mark registration had coexisted with Red Bull's for over seven years, their Red-Z product has been sold in the UK for 10 years and, during a period of nine months, it was sold alongside Red Bull's Red-X product, albeit on a limited scale. This is a good example of the trade mark register failing to reflect the reality of the market.
In the second UK opposition, Kamal Khanbabaei General Trading v Red Bull, an application for Bulzai label (featuring the colour red and the image of a bull) was opposed. Red Bull relied on their earlier registered rights in images of a bull and combinations of Red Bull with such images in Class 32, amongst other marks. They also filed substantial evidence of their reputation in the trade mark Red Bull.
The Hearing Officer found that none of the opponent's earlier marks had more than a low to moderate degree of similarity to the Bulzai label. Bearing that in mind, he found that there would be no likelihood of confusion between the mark applied for and any of Red Bull's earlier marks (Section 5(2)(b) ground of opposition rejected).
Turning to the ground of opposition based on Red Bull's reputation (Section 5(3) of the 1994 Trade Marks Act), the Hearing Officer was more sympathetic to the opponent's case. He decided that, even though the degree of similarity between the Bulzai label and Red Bull was at the lower end of the scale, when this was combined with the identity of the two sets of goods, the strength of Red Bull's reputation (in the trade mark Red Bull), the inherent distinctiveness of the trade mark Red Bull and the presence of the colour red as background in the mark applied for, a link would be made between the two marks such that sales of Bulzai branded energy drinks bearing the label applied for would ride on the coattails of Red Bull's reputation.
As the UK trade mark applicant had not provided any convincing explanation for its choice of mark nor shown that it had due cause for that choice, Red Bull's opposition based on Section 5(3) (reputation/unfair advantage) succeeded.
This also seems to be rather an odd decision. It is not entirely clear how two marks can be dissimilar enough for a finding of no likelihood of confusion, yet similar enough for a decision that one is taking unfair advantage of the other. If the opposition had succeeded on a passing off ground (Section 5(4)(a) of the 1994 Trade Marks Act), where issues such as the overall get-up of the two marks can be taken into account, then it would have been understood. However, Red Bull's success on the Section 5(3) ground seems rather strange.
The above Bulzai decision should be contrasted with the decision in the UK opposition between Advance Magazine Publishers and National Academy of Recording Arts and Sciences.
Advance Magazine had applied to register the trade marks Glammy and Glammies for, amongst other things, award ceremonies for beauty products (and treatments). The two UK trade mark applications were opposed by the organiser of the well-known Grammy Awards in the US. The opponent relied on earlier CTMs for the mark Grammy covering, amongst other goods and services, music award ceremonies.
The Hearing Officer accepted that there were visual and phonetic similarities between the marks (as well as differences). However, according to the Hearing Officer, these were outweighed by the conceptual difference between them, Glammy/Glammies referred to glamour whilst Grammy brought weight (as in grammes) to mind. On this basis, the marks were dissimilar. No talk of low to moderate similarity here, the marks were just dissimilar.
Having made that judgement, it was almost inevitable that all three grounds of opposition (Section 5(2)(b), 5(3) and 5(4)(a)) would be rejected. They were.
The Glammy Awards, organised by the UK trade mark applicant's Glamour magazine have been held in the US (at least) for at least ten years alongside the better known Grammy Awards. In relation to award ceremonies therefore, the Hearing Officer's conclusion that the marks are distinguishable one from the other seems to be confirmed by the position in the market.
In the last edition of Make Your Mark, we reported a UK trade mark revocation action, based on non-use, in which use of the trade mark AlfaD was deemed to be inadequate to maintain a UK trade mark registration for ALFAD.
The Hearing Officer who made that rather odd decision has now made an equally odd decision on similar facts. In the latest case, Continental Shelf 128 v Dosenbach-Ochsner, the mark at issue was CATWALK registered in respect of Class 25 goods. Dosenbach-Ochsner applied to revoke the trade mark registration on the ground that it had not been put to genuine use in the UK during the previous five years (Section 46 of the 1994 Trade Marks Act).
The evidence showed that the registered proprietor had used a stylised form of the mark CATWALK, see above, in the UK during the relevant period in respect of women's clothing.
The Hearing Officer therefore needed to decide whether the use of the stylised mark was "use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered". If it was, the trade mark registration would survive for "women's clothing".
The Hearing Officer decided that it wasn't. She accepted that the word mark and the stylised mark were identical phonetically and conceptually. However, in her view, the visual differences between the word mark and the stylised mark had altered the distinctive character of the registered, word only mark. The differences had turned a word only mark into a stylised mark which has a greater degree of inherent distinctive character.
It followed from this reasoning that the registered proprietor had not made any genuine use of the word mark CATWALK and the trade mark registration was revoked.
This is a pretty extraordinary decision which appears to put registrations for word marks such as Dell, eBay, Ferrari and Pirelli at risk given the pretty stylised nature of the marks that are actually in use. It is submitted that a much more sensible, and commercially realistic, view of these matters, would be that the stylisation of a word mark should have to be so dramatic that it is virtually illegible before the use of the stylised mark fails to save a registration for the word mark. That would be the case for Dell, eBay, Ferrari and Pirelli (see stylised form), and certainly should have been the case in the above Catwalk decision.
A more understandable decision was made in another UK revocation action, Dilly Braimoh v Parragon Books. In this case, the registered mark consisted of the word Brightspark and a Star Device. It was registered for Class 35, 38 and 41 services. Parragon Books filed a non-use revocation action. All of the evidence of use put forward by Ms Braimoh showed use of the word mark, Brightspark. There was no evidence of use of the combination mark.
The Hearing Officer revoked the trade mark registration. In his view, the trade mark registered consisted of two elements, each of which had its own distinctive character. It followed that use of the word mark alone altered the distinctive character of the combination mark that was registered.
It is to be hoped that, if the reverse situation had applied, namely that Ms Braimoh had obtained a registration for the word mark Brightspark, but had used the combination of Brightspark and a Star Device, then, in those circumstances, the registration for the word mark would have been saved by the genuine use of the word Brightspark with an additional device element.
A similar point on the genuine use of a trade mark was dealt with by the General Court in Fruit of the Loom v Blueshore Management (T-514/10).
Blueshore, part of the group that retails the Frutta (Italian for Fruit) brand of clothing, had applied to revoke the CTM proprietor's registration for Fruit in Classes 18 and 25 on the ground of five years non-use in the EU (Article 51(1)(a) CTMR).
Fruit of the Loom put in evidence of their use of the trade mark Fruit of the Loom in the EU for the registered goods and argued that, under Article 15(1)(a) CTMR, this should be viewed as genuine use of the registered mark (Fruit). They also provided evidence of their use of the website fruit.com.
The OHIM Cancellation Division, the Board of Appeal and the General Court in turn refused to accept that either the registered proprietor's use of the trade mark Fruit of the Loom or their use of fruit.com could save their CTM registration for Fruit. In the Court's opinion, both the word Fruit and the word Loom had equal prominence (and dominance) in the used mark (Fruit of the Loom). It followed that the CTM proprietor's use of that mark could not qualify as use of Fruit in a form differing in elements which do not alter the distinctive character of the registered mark (Fruit).
The Court also dismissed Fruit of the Loom's reliance on the website, fruit.com. In their view, this website was simply a tool used for marketing and advertising Fruit of the Loom branded products.
Presumably, Fruit of the Loom filed this CTM registration to defend the register (and the market?) against other Fruit marks in Classes 18 and 25. They have one further such defensive CTM registration for Fruit in Class 25. Unfortunately that registration became vulnerable to non-use revocation in May 2012. Fruit of the Loom can expect to receive another non-use revocation action from Blueshore if they (Fruit of the Loom) continue to object to Blueshore's attempt to register their mark Frutta before OHIM.
How far can you go, as a CTM applicant, in usurping the trade mark rights of third parties based outside the EU before the European Court will make a finding of bad faith is an important question in EU trade mark practice. A fair distance appears to be the answer if the case of Carrols Corp v Giulio Gambettola (T-291/09) is anything to go by.
Carrols, the owner of the US restaurant chain Pollo Tropical, has been trading in the US under the distinctive logo mark Pollo Tropical Chicken On The Grill (see top mark opposite) since September 1991. They applied to register the mark at the USPTO in April 1994 and it was eventually registered in August 1997.
By an extraordinary coincidence, in June 1994 a Spanish restauranteur, Mr Giulio Gambettola, who runs a small restaurant called Pizzeria Giulio's on the Spanish island of Tenerife, filed a Spanish trade mark application for the virtually identical Pollo Tropical Chicken On The Grill logo covering restaurant services in Class 42 (see the bottom mark above). This Spanish application was registered in December 1995. Mr Gambettola was able to oppose two later Spanish trade mark applications made by Carrols predecessor for the marks Pollo Tropical and the Pollo Tropical Chicken On The Grill logo.
Just over three years later, Carrols filed for and obtained registration of two UK trade mark registrations for the marks Pollo Tropical and Pollo Tropical Chicken On The Grill logo (in black & white) for restaurant services. Presumably they did not seek CTM registrations because of the existence of Mr Gambettola's Spanish trade mark right.
Such considerations did not daunt Mr Gambettola who, in November 2002, filed a CTM application for the logo in Classes 25, 41 and 43 claiming inter alia "Services for providing food and drink". Astonishingly, this CTM application was not opposed by Carrols and, as a result, proceeded to registration in April 2004.
Presumably not believing his good luck, in 2006 Mr Gambettola began to take steps to protect his CTM, at least against a non-use attack, by executing a licensing agreement for the CTM logo mark.
Eventually, Carrols decided to take some sort of initiative in this dispute. In January 2007 they applied to cancel Mr Gambettola's CTM registration on the basis of their two prior UK trade mark registrations and on the ground that Mr Gambettola has been acting in bad faith when he filed his CTM application. Unfortunately, by the time that they filed this action, Carrols' UK trade mark rights were outside their non-use grace periods and so, in order to succeed, they (Carrols) had to prove use of their marks in the UK during the relevant five year period. This they were unable to do to the satisfaction of the OHIM Cancellation Division. The Article 53(1)(a) CTMR (formerly Article 52(1)(a)) ground of invalidation was therefore rejected.
Turning to the bad faith ground (Article 52(1)(b) CTMR, formerly Article 51(1)(b)), the Cancellation Division were persuaded by
i) The short time difference (two months) between Mr Gambettola's initial Spanish trade mark application for the logo (June 1994) and Carrols' first US trade mark application for the virtually identical mark (April 1994); and
ii) What they termed, the "continuity or commercial trajectory" between Mr Gambettola's Spanish and CTM filings;
that he had not acted in bad faith when filing his CTM application in November 2002. The Cancellation Division therefore rejected Carrols' invalidation action.
The reader may not be surprised to learn that Carrols appealed this adverse decision. Once again however, their action was rejected, this time by the First Board of Appeal. On the question of Carrols' prior trade mark rights, the Board agreed with the Cancellation Division that Carrols' proof of use of their logo mark was inadequate to sustain their UK trade mark registrations. Turning to the issue of bad faith, the Board noted that Carrols had provided no evidence to show that Mr Gambettola had been aware of their (Carrols') commercial activities in the US prior to choosing and protecting his logo mark. They were also unpersuaded by repeated requests by Mr Gambettola for up to $5 million to settle the dispute. Finally, the Board took a dim view of Carrols' delay in applying to cancel Mr Gambettola's CTM registration, a delay of nearly three years between the grant of Mr Gambettola's CTM registration and the invalidity request.
Carrols appealed again, this time to the (European) General Court who were also unsympathetic to their case. In once again rejecting the cancellation action, the Court found the following facts persuasive in respect of the bad faith ground of invalidation:
• Carrols' lack of genuine use of its marks in the EU, particularly in the UK, prior to Mr Gambettola's CTM filing date; and
• The lack of any contractual relationship between Carrols and Mr Gambettola.
Carrols has not played this dispute particularly well. Here are some of the missed opportunities:
a) They seem to have had an earlier (US) priority (25 April 1994) for their original Spanish trade mark applications which, if invoked, would have got them ahead of Mr Gambettola's Spanish right (dated 20 June 1994).
b) In December 2000, when Mr Gambettola's Spanish trade mark registration became vulnerable to a non-use attack, they should have filed a CTM application for the logo mark (and put Mr Gambettola) to proof of use in any opposition) and applied to revoke Mr Gambettola's Spanish trade mark registration.
c) They should have opposed Mr Gambettola's CTM application based on their prior UK trade mark registrations which were still in their grace period when Mr Gambettola's CTM application was published.
Having failed to lodge such an opposition, they should certainly not have waited three years to apply to cancel Mr Gambettola's CTM right.
d) In their cancellation action against Mr Gambettola's CTM registration, Carrols should have relied on their copyright in their Pollo Tropical logo, as well as their earlier UK trade mark rights and the ground of bad faith.
e) They should have applied to revoke Mr Gambettola's CTM registration as soon as it became vulnerable to a non-use attack in April 2009.
Having said all of which, in the writer's view, Carrols have been very badly served by the EU authorities in this case. Whilst it is possible to believe that the trade mark Pollo Tropical could have been independently derived by two different owners, one in the US, the other in Spain, and it is even possible to believe that a Spanish based restauranteur, running a single pizza restaurant in Tenerife, could have independently derived a mark consisting of the Spanish phrase Pollo Tropical and the English phrase Chicken On The Grill, it really stretches any sensible person's credulity to breaking point to believe that every aspect of a rather distinctive logo form of the mark could have been independently derived.
Although it is now rather too late, if the writer had been running this case, he would have been trying very hard to ascertain whether or not Mr Gambettola visited the United States, in particular the State of Florida, where Carrols' Pollo Tropical restaurants began operating, during the period between the launch of the Pollo Tropical chain in the US (September 1991) and the date Mr Gambettola filed his Spanish trade mark application (June 1994).
As far as the issue of bad faith is concerned, the lesson of the Pollo Tropical case appears to be that, in the absence of any contractual relationship between the two parties, or some other evidence that catches a CTM applicant red handed, the EU trade mark authorities will assume that a CTM mark that is identical with a distinctive earlier trade mark developed in the US or elsewhere outside the EU, has been independently derived by the CTM applicant. This will be the case even if the earlier mark is in the form of a logo, not just the form of a word mark.
The Pollo Tropical case above should be contrasted with the General Court's ruling in another recent invalidation action based on the ground of bad faith (Feng Sheng Technology v Jaroslaw Majtczak; T-227/09).
The Taiwanese company, Feng Shen Technology, manufactures and sells "zip fasteners" under the FS (stylised) trade mark shown below. This trade mark was registered for zip fasteners in Taiwan. In 2000, Feng Shen entered into a business relationship with a Polish individual, Mr Jaroslaw Majtczak. The evidence showed that, when Mr Majtczak ordered zip fasteners from Feng Shen, for sale in Poland, he did so by reference to the Taiwanese company's catalogue that featured their FS (stylised) mark. Further invoices sent by Feng Shen to Mr Majtzcak also bore the FS (stylised) mark.
In 2004, Feng Shen began to employ a different distributor, Pik Foison, for the sale of its FS zip fasteners in Poland. All business relations between Feng Shen and Mr Majtczak ended in January 2005.
In June 2005, Mr Majtczak filed a CTM application for the far less stylised FS mark (shown below) covering "zip fasteners". Having obtained his CTM registration, Mr Majtczak proceeded (in September and October 2006) to request that the Polish customs authorities seize consignments of zip fasteners bearing Feng Shen's stylised FS trade mark that were in the possession of Pik Foison.
In October 2006, Feng Shen applied to cancel Mr Majtczak's CTM registration on the ground that it had been applied for in bad faith (Article 52(1)(b) CTMR, formerly Article 51(1)(b)). Mr Majtczak resisted the application, claiming that he had no knowledge of Feng Shen's trade mark being applied to zip fasteners and further claiming that Feng Shen manufactured zip fasteners bearing the CTM (less stylised FS) mark to his (Mr Majtczak's) order. Mr Majtczak additionally claimed that he had produced his CTM mark in 1999 and developed it on the Polish market from 2000 onwards.
OHIM's Cancellation Division rejected the invalidation action, a decision that was confirmed by the Fourth Board of Appeal. According to the Board,
• The burden of proving the existence of bad faith lay with Feng Shen (the applicant to invalidate);
• Feng Shen's stylised FS mark was not similar on a visual level to Mr Majtczak's (largely) unstylised FS mark;
• Feng Shen had not shown that it had used its mark in the EU, in particular Poland, in relation to zip fasteners, before the CTM filing date;
• Feng Shen merely manufactured zip fasteners to Mr Majtczak's order and according to his specification;
• Mr Majtczak began marketing zip fasteners bearing his unstylised trade mark in Poland in 2000.
Feng Shen appealed to the General Court who annulled the Board's decision and sent the case back to the Board of Appeals for further review. In performing a demolition job on the Board of Appeal's findings of fact and reasoning, the Court ruled as follows;
i) The Board had failed to perform a full comparison of Feng Shen's and Mr Majtczak's marks, omitting the phonetic and conceptual comparisons. The fact that the Polish authorities had seized the Feng Shen manufactured zip fasteners that were in Pik Foison's possession suggested overall similarity (between the marks) and a subsequent likelihood of confusion;
ii) It was clear from the evidence of the cancellation file that Feng Shen had supplied Pik Foison (based in Poland) with FS (stylised) zip fasteners from 2004 onwards, that is well before the filing date of Mr Majtczak's CTM application;
iii) Nothing in the evidence justified the finding that Mr Majtczak had used his mark in relation to zip fasteners either in 2000 or at any other time.
Unfortunately for Feng Shen, the General Court were unwilling to follow the logic of their findings (and rulings) and rule in their (Feng Shen's) favour and declare Mr Majtczak's CTM registration invalid. Instead, they remitted the case to OHIM's Board of Appeals. One factor in Feng Shen's favour is that it shouldn't end up on the desks of the Fourth Board again.
The difference in outcome between this (Feng Shen) case and the Pollo Tropical case discussed above is explained, almost entirely, by the fact that, prior to Mr Majtczak's CTM filing, he had had business dealings with Feng Shen and, on the balance of probability, would have been aware of Feng Shen's FS (stylised) mark.
One thing that the Fourth Board probably did get right in their ill-fated decision was that the burden of proving the existence of bad faith lies with the applicant to invalidate. In the writer's view, however, there are some bad faith cases where that burden (of proof) should switch to the registered proprietor. Certainly, where, as in the Pollo Tropical case, the earlier mark and the CTM mark applied for are both distinctive logo marks and the CTM mark is virtually identical with the earlier mark, then the CTM applicant should be required to explain fully how he came to choose his mark.
Continuing with the issue of bad faith, what is the position if two companies trade under similar trade marks in the EU and then one of them decides to protect its mark in the whole EU, including the countries in which it knows the other company is trading? Not only that, it then brings infringement proceedings to try to prevent that other company continuing to trade. From the recent General Court case of Peeters Landbouwmachines v AS Fors (T-33/11), the answer seems to be, it depends on the circumstances but, if you've got any sense, get in first.
AS Fors has been selling Bigab hook lift trailers in various EU countries since 1991. Peeters has been selling Biga vertical feed mixers in a number of EU countries since 1996. During the period 1996 to 2007, Peeters sold about 3500 Biga branded mixers (total value about 70 million euro), half of which had been sold in the Benelux. Both companies therefore operated in the agricultural and/or forestry machinery sector.
Neither company had sought to register its trade mark until AS Fors had the bright idea in March 2005 of applying to register the trade mark Bigab as a CTM for relevant agricultural/forestry products in Classes 6, 7 and 12. Once Fors' CTM was registered a year later, they wrote to Peeters demanding that they stop using the trade mark Biga in the EU. In response, after a fairly long gestation period, Peeters applied to invalidate Fors' CTM on the basis of
• Their unregistered trade mark rights in the trade mark Biga acquired by use in the Benelux (Article 8(4) and 53(1)(c) CTMR); and
• The bad faith of Fors in applying to register the trade mark Bigab throughout the EU (via the CTM) (Article 52(1)(b) CTMR).
The invalidation action was rejected by OHIM's Cancellation Division. Dealing with the Article 8(4) ground of invalidation first, the Cancellation Division pointed to a fundamental flaw in Peeters' case; Benelux law does not recognise unregistered trade mark rights. It may be possible to protect trade names in the Benelux but Peeters had not relied on such a right, nor had they filed any relevant evidence on trade name use. As a result, that particular (Article 8(4)) horse fell at the first fence.
Turning to the issue of bad faith, the Cancellation Division recognised that the European Court had already considered a similar fact situation in the case of Chocoladenfabriken Lindt v Franz Hauswirth (C-529/07) and had ruled that the following factors were relevant:
• Whether the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought;
• Whether the applicant's sole aim with the registration is to prevent that third party from continuing to use such a sign;
• These circumstances have to be weighed against the degree of legal protection enjoyed by the third party's sign and by the sign for which registration is sought.
In the present case, the Cancellation Division noted the following:
i) The CTM proprietor (and its predecessor in title) had been trading since 1991 in the EU, five years before the applicant to invalidate had begun;
ii) It was not sufficient in itself for the CTM proprietor to have knowledge of the applicant to invalidate's activities for a finding of bad faith to be made. This was particularly the case when there was no contractual (or pre-contractual) relationship between the parties;
iii) Given its use of the trade mark Bigab, and its expansion in the EU market, it was clear that the sole objective of Fors was not to exclude Peeters from using its mark in the EU market. Fors clearly wished to protect its trade mark position in existing and possible future markets;
iv) At the date of the CTM filing, Peeters had no legal protection for its sign Biga in the Benelux. There was therefore no justification for examining the third factor set out in the Lindt case above.
On this basis, the Cancellation Division rejected the bad faith ground of invalidation.
Peeters appealed, but only the finding on bad faith. The appeal was dismissed by the First Board of Appeal. The Board agreed with the findings and the reasoning of the Cancellation Division. The Board commented that the CTM system was a first-to-file system, the CTM proprietor not only had the prior user right in its mark Bigab, but could also explain the derivation of its mark from the company name Blidsberg Investment Group AB. The Board stated that Peeters had been free to register its trade mark Biga, either at EU national level or at CTM level, prior to Fors' CTM filing, but had chosen not to do so.
Bearing in mind the level of annual sales of Biga mixers that were at stake, Peeters appealed to the General Court. The appeal was given short shrift and was rejected again. The Court confirmed the findings of both the Cancellation Division and the Board of Appeal in respect of bad faith.
As you can imagine, Peeters haven't given the fight up yet. They have now applied to revoke Fors' CTM registration, in so far as it covers Class 7 goods, on the ground of five years non-use in the EU. Astonishingly they have even got around to registering their own mark Biga for feed mixers in both the Benelux and (in October 2011) at OHIM.
This case has been great news for the lawyers involved. For the owners and users of trade marks it is the perfect illustration of one of the most important rules of commerce; protect your trade mark by registration, particularly if you have been using it for many years and have developed a market in the region of around 7 million euro a year.
Even more on bad faith. Robert Craig (Evel) Knievel was an American daredevil and entertainer. He made his considerable reputation during the 1960s and 1970s by performing (or attempting) over two hundred ramp-to-ramp motorcycle jumps and breaking over four hundred bones in the process; the latter feat getting him a place in the Guinness Book of World Records. He is probably best known in the UK for attempting to jump over thirteen single-deck buses at a sold out Wembley Stadium in 1975. Having (just about) managed it, Evel went on to address the crowd with only a fractured pelvis to add to his litany of broken bones.
Eve Knievel died in November 2007 leaving a long-term partner, a former wife, two daughters and two sons. One of his sons, Robbie Knievel followed his father into the motorcycle jumping business, his other son, Kelly Knievel, did not, preferring to manage the continuing business associated with his father's reputation.
At some point, there appears to have been a parting of the ways between Robbie Knievel and the remainder of his family since, in March 2009, his promotion company, Big Sky Promotions filed UK trade mark applications in a variety of merchandise classes, not only for Robbie Knievel, but also for Evel Knievel and Knievel. Whilst the application for Robbie Knievel proceeded to grant, the latter two applications were opposed by K&K Promotions on a number of grounds, but primarily on the ground that Big Sky's applications had been made in bad faith (Section 3(6) of the 1994 Trade Marks Act). K&K is the company that represents the commercial interests of the whole family of the deceased daredevil, including Robbie Knievel.
In the Hearing Officer's view, the evidence showed that, at the date of his UK trade mark filings (March 2009), Robbie Knievel would have been aware of K&K's activities, including their efforts to expand their business into the UK. This knowledge could be extrapolated to Robbie Knievel's company, Big Sky Promotions (the trade mark applicant). It inevitably followed that the Hearing Officer would find that Big Sky's behaviour fell short of what would be expected in normal commercial affairs. The applications represented an unjustified attempt by Robbie Knievel to obtain a greater commercial benefit for himself at the expense of other family members. The Section 3(6) ground of opposition therefore succeeded and Big Sky's UK trade mark applications for Evel Knievel were rejected.
These decisions have led to K&K obtaining their own, later filed UK trade mark registrations for Evel Knievel. This can be added to their CTM registrations for Evel Knievel, Knievel and Kid Knievel.
It remains to be seen if this internecine trade mark dispute is now at an end. Even if it is, Christmas and Thanksgiving get togethers in the Knievel household should be interesting from now on. Perhaps a good idea for a new reality tv series?
The Light is an entertainment and shopping centre in the northern English city of Leeds (in Yorkshire). It leases space to retailers, such as Lacoste and The Body Shop, as well as cafes and restaurants such as Café Rouge, Nandos and Starbucks. A Radisson Blu hotel is also situated in the complex. The owner of the property, Aegon UK Property Fund, had protected its interests in the trade mark The Light with two UK trade mark registrations for the phrase (one of which also contained a device element). These registrations protected a wide range of shopping centre and retail related services, in Class 35, as well as "provision of food and drink; restaurant, cafeteria and bar services; provision of hotel and other temporary accommodation" in Class 42 (now Class 43). These registrations were both granted in 2003.
The Light Aparthotel is a boutique hotel in another northern English city, Manchester (in Lancashire). This hotel, which opened in 2009, has no connection with Aegon UK. At around the time of its opening, the owner of The Light Aparthotel filed a UK trade mark application for The Light for hotel and related temporary accommodation services in Class 43. This application was opposed by Aegon UK. In response The Light Aparthotel LLP applied to revoke Aegon UK's earlier UK trade mark registrations, in so far as they protected conflicting Class 43 ( Class 42) services, on the ground of five years non-use.
Aegon UK's evidence of use referred primarily to their provision of shopping/entertainment centre facilities to the likes of Starbucks, Nandos, Café Rouge and Radisson Blu. There was some evidence that, when booking accommodation at the Radisson Blu hotel, some guests would phone The Light customer services department. There was also a sign for The Light (shopping/entertainment centre) on the Radisson Blu hotel. Aegon UK also argued that certain food and drink promotions by cafes/restaurants in the centre were evidence of the provision of food and drink by The Light (in Leeds). Finally, some evidence that The Light centre did provide food and drink to delegates renting meeting rooms in the centre was given.
The Hearing Officer rejected all but one of Aegon UK's arguments that The Light centre was providing food and drink services and hotel accommodation services. Virtually all of these services were provided under the relevant trader's own brands (Radisson Blu, Starbucks, etc). The Light centre provided shopping/entertainment centre services and, as part of those services, did offer food and drink for rented meeting rooms, but nothing more. Aegon UK's Class 42 services were therefore restricted to "Provision of food and drink in connection with the provision of conference and meeting room hire" as well as "architectural consultation services; land and building surveying services" which had not been challenged by The Light Aparthotel.
This latter day War Of The Roses was not finished there though. Aegon UK appealed to the Appointed Person (Daniel Alexander QC). Mr Alexander rejected all of the registered proprietor's arguments relating to use and confirmed the Hearing Officer's decision on those issues.
Aegon UK had raised another, rather technical point however, the decision on which would have a crucial effect on the overall outcome of this dispute.
The Light Aparthotel had applied to revoke Aegon UK's two UK trade mark registrations under both Section 46(1)(a) and 46(1)(b) of the 1994 Trade Marks Act. The former (Section 46(1)(a)) deals with the position where there has been no use in the five years immediately after the grant date of the UK trade mark registration under attack. In the present case, a successful attack would lead to revocation of Aegon UK's registrations from 15 February 2008. By contrast, Section 46(1)(b) essentially deals with the question of non-use in the five years immediately preceding the date the revocation action is filed. In the Aegon case that date (of filing for revocation) was 10 October 2009. So, under Section 46(1)(b), Aegon's UK trade mark registrations would have been revoked from 10 October 2009. The issue before Mr Alexander was that The Light Aparthotel had not expressly sought a revocation date earlier than 10 October 2009. Despite this, the Hearing Officer had revoked Aegon's UK trade mark registrations under Section 46(1)(a) and from 15 February 2008.
Although Mr Alexander recognised that the original pleadings of the applicant to revoke were important and the omission of a date of revocation to accompany the Section 46(1)(a) ground was an error, he sided with the Hearing Officer's decision on this point and maintained the 15 February 2008 revocation date.
The importance of the decision on the date of revocation lies in the related opposition filed by Aegon against the Manchester hotel's UK trade mark application for The Light. This application was filed on 26 June 2009. If Aegon's argument had succeeded, their UK trade mark registrations would have been revoked on 10 October 2009, that is after The Light Aparthotel's filing date (26 June 2009). Under UK trade mark practice (and contrary to CTM opposition practice), this would have meant that Aegon's UK trade mark registrations, covering all of their Class 42 (43) services would have been in force at the filing date of The Light Aparthotel's application (see Riviera, 2003 RPC 50) and Aegon's oppositions would, almost certainly, have succeeded.
By contrast, now that Aegon's registrations have been part-revoked from 15 February 2008, The Light Aparthotel has a much better chance of prevailing in Aegon's opposition to their UK trade mark application, either in full or at least in part.
In a recent decision of the European Court of Justice (C-196/11), Formula One Licensing (FOL), the licensing arm of the Formula One Administration Group, was able to maintain their near monopoly of the trade mark F1 on the UK trade mark and CTM registers. Admirers of Bernie Ecclestone can rest just a little bit easier in their beds.
The CTM applicant, Global Sports Media, had applied to register an F1-Live logo for goods and services in Classes 16, 38 and 41. All of the goods and services claimed were limited to those related "to the field of formula 1". This CTM application was opposed by FOL on the basis of earlier national and international trade mark rights for F1 in the relevant Classes, as well as a CTM registration for an F1 logo . Relying on FOL's earlier international right (for F1 in Classes 16, 38 & 41), the Opposition Division allowed the opposition, given the common presence of F1 in the earlier and later mark.
Global Sports appealed. The First Board of Appeal annulled the first instance decision and rejected the opposition. In the Appeal Board's view, the relevant public would see F1 as the generic designation of a category of racing car and races involving such cars. According to the Board, if the opponent had rights in F1, they lay solely in the logo protected by their CTM registration, rather than in the simple alphanumeric mark.
Given these rather damaging findings, FOL appealed to the General Court. Unfortunately, the decision of the Court to confirm the Appeal Board's findings only served to damage FOL's rights in F1 still further. The Court found as follows:
• According to the evidence presented, FOL had consistently promoted their F1 logo rather than F1 itself;
• Formula 1 was seen by the relevant public as a generic term for a particular type of motor racing;
• The alphanumeric F1 was a commonly accepted abbreviation of Formula 1 and was, as such, just as generic as the term Formula 1;
• The relevant public would not perceive the F1 element in Global Sport's mark as a distinctive element, but as an element with a descriptive function;
• Since consumers would not connect the F1 element in the opposed CTM mark with FOL, there would be no likelihood of confusion and the opposition based on Article 8(1)(b) CTMR should be rejected.
FOL's ground of opposition based on their reputation in F1 (Article 8(5) CTMR) was also rejected since the Court again found that any reputation owned by FOL was associated with the F1 logo protected by their earlier CTM registration, rather than with F1 itself.
Unsurprisingly, FOL appealed again, this time to the European Court of Justice (ECJ). The ECJ confirmed its previous position that the validity of earlier EU national trade mark registrations could not be questioned in CTM oppositions. It was necessary to seek to cancel such rights if the validity of the registration (from the point of view of absolute grounds) was an issue. Bearing that point of principle in mind, the ECJ considered that the General Court's finding that the sign F1 was generic (or non-distinctive) was essentially the same as accepting an argument that a registration protecting that sign was invalid. The ECJ therefore set aside the General Court's ruling and asked them to look at the matter again bearing in mind that the sign F1 is a registered trade mark in certain EU states.
This decision is in line with a number of previous European Court decisions in which (usually) Spanish companies have obtained Spanish trade mark registrations for words that are descriptive outside Spain. The registration in Spain of Donut (for doughnuts), Limonchelo (for limoncello) and Matratzen (for mattresses) springs to mind. If that were not bad enough, these companies are then allowed to enforce these rights before OHIM (and in the Court) against CTM applications claiming doughnuts, limoncello or mattresses. It is submitted that such rights, and the writer includes the rights for F1 in this group, should be given a very narrow penumbra of protection when considering the question of similarity before OHIM.
These European Court decisions lead to the position that in EU countries where many other EU languages are spoken it will be extremely difficult for local industry to monopolise descriptive foreign words. However, in essentially monolinguistic countries such as Spain and, to a slightly lesser extent, the UK, such descriptive words are fair game. It is not seen that the unenlightened education policies of certain EU countries, in terms of language teaching, should lead to advantages when protecting descriptive foreign words. In the writer's view, the examination of word marks should be harmonised throughout the EU. If a sign is descriptive of the goods/services claimed in at least one of the five main EU languages (English, French, German, Italian or Spanish), it should be refused as non-distinctive/descriptive by all EU trade mark offices.
Finally, for those anoraks who follow F1 racing, the only F1 marks on the CTM register that are not owned by Formula One Licensing are CTM 981639 for F1 Racing logo in Classes 16 and 41; this is an F1 magazine published by Haymarket, and CTM 9927336 for F1GPT.com & Device in Classes 41 & 43; this is an F1 ticketing agency.
At what point does a strapline forming a small part of a mark become so insignificant that it is not considered for similarity purposes. If the decision of the General Court in Luigi Panzeri v Royal Trophy (T-348/10) is anything to go by, then the answer is only when it is virtually invisible.
Royal Trophy filed a CTM application in Classes 24, 25 and 28 for a combination mark featuring the word Royal in large lettering placed over an even larger image of a lion. Underneath the word Royal was placed the phrase Veste e premia lo sport (Italian for "dresses and awards a prize to sport"). The application was opposed, in relation to identical and similar goods in Classes 25 and 28, by Luigi Panzeri based on an earlier CTM registration for the phrase Veste Lo Sport (Dresses The Sport) covering goods in Class 25.
As anyone other than Mr Panzeri and his advisors might have expected, the opposition was rejected by both the Opposition Division and the Board of Appeal. The Board concluded that the two marks were dissimilar visually, phonetically and conceptually. However, they went on to dismiss the opposition without making a global assessment of a likelihood of confusion.
Luigi Panzeri appealed. In a ruling that ought to astonish, but unfortunately, given past experience, does not, the Court first found a degree of visual and phonetic similarity between the two marks and then criticised the Board for failing to recognise a certain conceptual similarity between them. In the Court's view, they both brought to mind the idea of "dressing the sport" which could not be dismissed as just a promotional slogan. The Court therefore found that, on the basis of the similar elements between the marks, the Board should have conducted a full analysis of the likelihood of confusion. Since they had not, the case was sent back to OHIM by the Court to do so.
An important part of any EU trade mark practitioner's job is the clearance of new trade marks for registration and use in the EU. Rulings such as the one given above by the General Court make that task virtually impossible to do in a logical, reasoned manner. An EU moron in a hurry would not confuse the two marks involved. It is strongly to be hoped that the Board of Appeal will now reach the same conclusion as before but, on this occasion, will add the standard paragraph on a global assessment to their decision.
In any CTM opposition or invalidation action based on the earlier right owner's reputation in its mark (Article 8(5) CTMR), it is first important to show that the earlier mark and the CTM mark applied for are similar. If they are not, then no amount of evidence of reputation should overcome that finding. Two recent cases before the General Court illustrate the point.
In the first case, Ella Valley Vineyards v Hachette Filipacchi Presse (HFP) (T-32/10), the CTM applicant, an Israeli wine producer, filed for the figurative mark Ella Valley Vineyards in respect of "wines". The application was opposed by the French publisher of the well-known Elle magazine. The opponent relied on an earlier CTM registration for a slightly stylised version of the trade mark Elle covering "books and periodicals" in Class 16. They also brought forward evidence of their significant reputation in that mark for such Class 16 goods. It was accepted by the Tribunals involved in the case that the evidence was adequate to establish the opponent's reputation in their registered mark (Elle, stylised) for "magazines".
The Opposition Division rejected the opposition on the basis that the two marks were not similar enough for the relevant public to associate them or to establish a link between them. HFP appealed. The First Board of Appeal were persuaded to rule in favour of the opponent and to refuse the CTM application. According to the Board, the dominant feature of the CTM mark was the word Ella which was similar to the opponent's earlier mark. The Board also noted that Elle magazine published supplements containing recipes and even published an Elle magazine (Elle à Table) on food and wines. Added to this, Elle magazine had been directly involved with wine sponsorship (Cuvée Elle). According to the Board, all of this would serve to establish the necessary link between the opponent's mark and the CTM mark applied for which would mean that use of the Ella Valley Vineyards mark for wines would take unfair advantage of the opponent's reputation in the trade mark Elle (stylised).
The Israeli wine producer appealed to the (European) General Court who took a different view on the matter. The Court began by agreeing that the opponent's evidence proved the necessary reputation in Elle (stylised) and the potential for a link being made between the CTM applicant's wines and the opponent's magazines. Turning to the question of similarity between the two marks however, the Court disagreed with the conclusions of the Board. In the Court's view, the dominant element of the CTM mark applied for was the phrase Ella Valley which featured in a black square, rather than the single word Ella. That being the case, the two marks were only slightly similar in a visual and phonetic sense. Further, the opposed mark was likely to be seen as a place name related to the origin of the wine, an idea that would not be associated with the opponent's mark. The two marks were therefore conceptually dissimilar. Taking all of this into account, the Court ruled that the two marks at issue were too dissimilar for the relevant public to establish a link between them, in spite of the significant reputation of the opponent in its mark, Elle (stylised).
In the second case, Environmental Manufacturing v Société Elmar Wolf (T-570/10), the mark at issue was a figurative representation of a wolf's head (CTM 4971511).
Entec Industries, the predecessor in title to Environmental Manufacturing, applied for the mark at OHIM in respect of professional and industrial wood chippers and shredders and similar Class 7 goods. The CTM application was opposed by Elmar Wolf on the basis of inter alia two French trade mark registrations for combination marks, one featuring a wolf's head and the words Wolf Jardin, the other featuring a wolf's head and the words Outils Wolf. These earlier rights covered, amongst other goods, those in Class 7. In addition to these earlier trade mark rights, the opponent also relied on their reputation in their registered marks for garden machinery and tools (Article 8(5) CTMR).
The opposition based on Article 8(5) CTMR was rejected by the Opposition Division on the ground that the French opponent had not produced any evidence that the use of the CTM mark applied for would be either detrimental to the repute of the opponent's marks or would take unfair advantage of that reputation. The opposition based on a likelihood of confusion (Article 8(1)(b)) was also rejected by the Opposition Division.
This decision was annulled by the Second Board of Appeal. Concentrating on the Article 8(5) ground of opposition, the Board accepted that the opponent had established a significant reputation in its marks in Portugal and Spain, as well as in their home market, France. The Board then found that the CTM mark applied for had some similarity to both of the opponents' earlier marks and that therefore the relevant public could establish a link between them. On that basis, and bearing in mind that the two sets of goods were not a million miles apart, the Board concluded that use of the CTM applicant's mark could dilute the unique image of the earlier marks and could also take unfair advantage of their distinctive character or their reputation.
Environmental Manufacturing appealed to the (European) General Court, but without success. The Court first dismissed an argument put forward by Environmental that the opponent's products were aimed at a "domestic" gardening market, whilst their (Environmental's) products were destined for "professional" gardeners. In the Court's view, these two markets were basically the same.
The Court then turned to Environmental's argument that the Board's analysis was flawed in respect of both the risk of detriment caused to the distinctive character of the earlier marks (the risk of dilution) and the risk that unfair advantage of the distinctive character or repute of the earlier marks is taken by the applicant (the risk of free riding). In relation to the issue of dilution, Environmental relied on an earlier ruling of the European Court of Justice (Intel Corp v CPM UK, C-252/07) in which the ECJ had pronounced:
"76. Thirdly, as was stated in paragraph 29 of this judgment, detriment to the distinctive character of the earlier mark is caused when that mark's ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark.
77. It follows that proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future."
In particular, Environmental argued that Elmar Wolf had failed to show that the use of the CTM mark applied for would have an impact on the behaviour of EU consumers of their (Elmar Wolf's) goods (or would do in the future). Further, the Board of Appeal had failed to consider the question of the economic behaviour of relevant consumers at all.
As so often, when faced with an inconvenient ruling from a previous case, either one of its own or one given by the (superior) ECJ, the General Court essentially ignored it and came up with a formula that would lead to the outcome (a victory for the opponent) it wanted. According to the General Court, the requirement (from Intel) to show a change of economic behaviour didn't really require proof of that at all. What was required was proof that the earlier "mark's ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark".
When that lower, but much more realistic, test was applied, the General Court found that the Board of Appeal had applied the correct standards and that the use of the CTM applicant's mark for the goods claimed would be likely to dilute (be detrimental to) the distinctive character of the earlier marks.
Whilst the General Court's comments on dilution will be welcomed by trade mark owners, we are now in a familiar position that is often faced by EU trade mark owners and practitioners; which of two apparently contradictory cases should we follow? Should it be the sensible ruling of the General Court in Elmar Wolf or the pretty daft, and commercially unrealistic, ruling of the superior Court (ECJ) in Intel? As often is the case, when trying to give trade mark advice in the EU, possibly the best way forward would be to toss a coin.
As far as the similarity between the earlier and later marks in this case is concerned, the decisions of the Board of Appeal and the Court are not entirely surprising. However, since Environmental appears to sell its Timberwolf products bearing their wolf's head to professional gardeners in France, alongside Elmar Wolf's more domestic products, it appears that the market, which rarely deals with fine points of legal interpretation, has already made its decision that the two parties' marks can, in fact, peacefully coexist without any danger of confusion or significant loss to reputation.
Love can take many forms and two of them were compared in a recent UK trade mark opposition, Sandra Elliot v LRC Products.
Ms Elliot applied for the trade mark LUV in respect of a variety of sexual aids and toys in Class 10. Her application was opposed by the contraceptive manufacturer LRC who owned an earlier CTM registration for Love covering various contraceptive products.
The Hearing Officer found that the two marks were phonetically and conceptually identical but only visually similar to a low degree. When this was combined with the low similarity/dissimilarity between the two sets of goods, as well as the low distinctiveness of LRC's mark (in respect of the products covered), the Hearing Officer decided that there would be no likelihood of confusion between Ms Elliot's LUV sexual aids/toys and LRC's Love contraceptives. The opposition was therefore rejected.
You might have thought that the Balti style of cooking originated in the mountainous northern region of Pakistan known as Baltistan. Not if you came from the English city of Birmingham, you wouldn't. The citizens of that city claim that the Balti style of curry was invented, then perfected, in Birmingham. The word is said to be derived from the Urdu word Balty, meaning bucket. The dish is cooked in a round-bottomed, wok-like dish with two handles, a Balti pan. Balti restaurants, otherwise known as Balti houses, are said to have originated in a small area of Birmingham, known as the Balti Triangle. It's like the Bermuda Triangle, but you disappear into the toilet rather than into the sea.
With the increased popularity of curry as a meal in the UK, and a growing range of pre-cooked "Balti" dishes being stocked by UK supermarkets, those who claim to have originated the term have decided to try to protect their rights. That is why the Birmingham Balti Association has recently applied to register Birmingham Balti as an EU Traditional Speciality Guaranteed (TSG) product.
If successful, Birmingham Balti will join other British products such as Traditionally Farmed Gloucestershire Old Spots Pork and Traditional Farmfresh Turkey on the EU TSG register, alongside other EU products such as Mozzarella and Pizza Napoletana.