A second bite of the apple leaves a sour taste

Authors: Maeve Lynch and John Colbourn (Redd Solicitors LLP, London, UK)

Apple and Pear Australia Ltd., Star Fruits Diffusion v Office for Harmonisation in the Internal Market (Trade Marks and Designs), Carolus C. BVBA, General Court (Fourth Chamber), Case T-378/13, EU:T:2015:186, 25 March 2015

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv112, first published online: July 9, 2015

The General Court has decided that, in the context of opposition proceedings, although the Office for Harmonisation in the Internal Market has a duty to consider the decisions of Community trade mark courts in parallel infringement proceedings concerning the same parties and the same marks, it is not bound to follow them.

Legal context

Council Regulation 207/2009 on the Community trade mark (CTM) stipulates which decision-making bodies have jurisdiction to decide various matters relating to CTMs. In particular, Article 96 of the Regulation provides that CTM courts are to have exclusive jurisdiction for, inter alia, infringement actions and counterclaims for revocation of CTMs. However, under the Regulation, the Office for Harmonisation in the Internal Market (OHIM) has jurisdiction to adjudicate upon applications for registration of a CTM. Consequently, it is possible for opposition and infringement proceedings to proceed in parallel even though they concern the same parties and the same marks.

Facts

Carolus, a Belgian tree nursery specializing in apple trees, applied in October 2009 to register the word mark ENGLISH PINK as a CTM for goods in class 31, including agricultural products and fresh fruits. An application for an identical Benelux mark, filed by Carolus on the same date, was subsequently granted.

Apple and Pear Australia Ltd. and Star Fruits Diffusion (the opponents) used PINK LADY in connection with the sale of a particular variety of apple, called Cripps Pink. In April 2010, the opponents opposed Carolus' application to register ENGLISH PINK as a CTM on the basis of three earlier CTMs which were registered for goods that were largely identical to the goods for which ENGLISH PINK was proposed to be registered. These CTMs were:

The word PINK LADY; 

Two separate figurative marks featuring the words ‘Pink Lady’ (shown below).

Shortly thereafter, in June 2010, the opponents commenced infringement and revocation proceedings against Carolus before the Tribunal de commerce de Bruxelles (the ‘Brussels Commercial Court’). Two years later the Brussels Commercial Court delivered its judgment. As regards the strength of the opponents' mark, the court took the view that PINK LADY was not descriptive since apples are not pink and, on the basis of evidence adduced by the opponents and common knowledge, PINK LADY had a substantial reputation. Holding that; there was a likelihood of confusion between ENGLISH PINK and PINK LADY, it ordered Carolus to refrain from infringing the opponents' CTMs throughout the European Union and invalidated Carolus' Benelux ENGLISH PINK mark.


Following this decision, the opponents wrote to OHIM a number of times to draw its attention to the ruling of the Brussels Commercial Court and in August 2012, the opponents informed OHIM that Carolus had acquiesced in the judgment, which was therefore final.

However, in May 2013, the Fourth Board of Appeal rejected the opposition. Surprisingly, the Board of Appeal made no mention of the decision of the Brussels Commercial Court, despite having been made aware of it on a number of occasions. Further, its analysis of the likelihood of confusion between the two marks was very different from that of the Brussels Commercial Court. For example, the Board of Appeal observed that the ‘pink’ element of PINK LADY was non-distinctive because apples ‘may oscillate into shades of pink’ and it took the view that the opponents had not adduced sufficient evidence in support of their argument that PINK LADY had a reputation.

The opponents appealed to the General Court on the basis that the Board of Appeal should have considered the decision of the Brussels Commercial Court and delivered a ruling that was compatible with that decision.

Analysis

Should the Board of Appeal have taken the Brussels decision into account?

The General Court noted that the decision of the Brussels Commercial Court was, prima facie, ‘a relevant factual element for resolving the case at hand’ and added that The Board of Appeal could not fail to recognise that there were essential common points between the factual aspects at issue in the infringement proceedings initiated and the opposition proceedings brought to contest the registration of the mark sought. Not only were the parties to both sets of proceedings identical, but also the earlier word mark relied on in support of the infringement proceedings before the Brussels Commercial Court was the same as the one relied on in support of the opposition proceedings before the various departments of OHIM. Moreover, the Benelux mark ENGLISH PINK, annulment of which was ordered by that court, and the mark sought were highly similar.

It was also relevant that the decision had been made by a CTM court established under the Regulation and that the Regulation was intended to guarantee uniform protection of CTMs throughout the European Union.

Accordingly, the General Court held that the Board of Appeal should have assessed the impact of the Brussels Commercial Court's decision in the present case. Further, the Board of Appeal had infringed Article 75 of the Regulation for failing to state reasons for the inferences to be drawn from that decision. The General Court held that these failures constituted grounds for annulment of the Board of Appeal's decision.

Res judicata

The General Court also considered whether, under the principle of res judicata, the Board of Appeal was bound by the decision of the Brussels Commercial Court. In this respect, the General Court made the following points:

• Board of Appeal decisions must be assessed solely on the basis of the Regulation and not on the basis of earlier judicial decisions; 

• While the Regulation does explicitly deal with the application of res judicata in some specific scenarios, the Regulation does not contain any provision by which OHIM is bound by a decision of a CTM court delivered in an action for infringement when it exercises its exclusive jurisdiction over the registration of CTMs in the context of CTM opposition proceedings; 

• The requirement of unitary character of the CTM does not mean that res judicata applied to the situation in question; 

• The subject matter and causes of action of the proceedings were different. The action for infringement before the Brussels Commercial Court concerned the validity of the Benelux mark ENGLISH PINK (under Benelux law) and a request for a pan-European injunction on the basis of the opponents' CTMs (under Articles 9(1)(b) and 9(1)(c) of the Regulation). However, the proceedings before OHIM concerned opposition to the registration of ENGLISH PINK as a CTM (under Articles 8(1)(b) and 8(5) of the Regulation); and 

• Carolus' Benelux mark and the CTM it applied for were two legally distinct marks. The judgment of the Brussels Commercial Court had the effect of protecting the opponents' earlier word mark only against the effects of the Benelux mark ENGLISH PINK.

For these reasons, the General Court held that the principle of res judicata did not attach to the judgment of the Brussels Commercial Court in the context of the OHIM opposition proceedings.

Practical significance

This decision is unsatisfactory for brand owners who rely on an earlier CTM in order to prevent a third party from using and registering as a CTM a later identical or similar sign. The Board of Appeal's decision illustrates how it is possible for a trade mark proprietor to enforce its CTM and obtain from a CTM court a pan-European injunction against a third party infringer but leaves that same proprietor powerless if OHIM does not consider itself bound by that decision and proceeds to register as a CTM the ‘infringing’ sign. The relevant infringer is left with a registered CTM which it cannot use and which presumably will be vulnerable to revocation after a period of five years of non-use due to the effect of the injunction.

The one positive aspect of this decision is that OHIM has at least a duty to consider and set out the inferences that it draws from such decisions of CTM courts. However, this case constitutes an excellent example of how OHIM and national courts can take very different approaches to the same factual circumstances and essentially the same legal tests that apply to infringement and opposition scenarios. Unfortunately, there is no guarantee that parties to parallel infringement and opposition proceedings will not be subject to similar conflicting decisions in the future.

Acronyms within composite marks and the question of likelihood of confusion

Author: Birgit Clark (Locke Lord LLP, London, UK)

Case C-20/14 BGW Marketing & Management Service GmbH v Bodo Scholz, Court of Justice of the European Union (CJEU), Opinion of Advocate General (AG) Mengozzi, 12 March 2015

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv109, first published online: June 21, 2015

The Advocate General provides guidance on how to assess a likelihood of confusion with regard to acronyms included in descriptive composite trade marks, holding that the guidance of the Court of Justice of the European Union in Medion (C-120/04, EU:C:2005:594) is applicable.

Legal context

Under the heading ‘Further grounds for refusal or invalidity concerning conflicts with earlier rights’, Article 4(1)(b) of EU Directive 2008/95 provides that a trade mark:

shall not be registered or, if registered, shall be liable to be declared invalid: if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

Articles 3(1)(b) and (c) of the Directive provide that:

the following shall not be registered or, if registered, shall be liable to be declared invalid:… (b) trade marks which are devoid of any distinctive character; (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services.

Facts

The Bundesverband der deutschen Gesundheitswirtschaft (German Federal Association for Businesses in the Healthcare Sector) applied in 2006 to register the composite word trade mark ‘BGW Bundesverband der deutschen Gesundheitswirtschaft’ as a German trade mark in classes 16, 35, 41 and 43. An opposition was filed by BGW Marketing & Management Service based on its earlier word/figurative mark consisting of the letters ‘BGW’ set inside a black square, covering similar goods and services in classes 16, 35 and 41.

The opposition went through several instances and ended in the German Federal Patent Court, which found that there was a likelihood of confusion between the marks in relation to identical goods in class 16 (printed products) and identical and similar services in classes 35 and 41 (advertising services, organization of seminars and organization of competitions), insofar as these were provided to businesses operating in the health sector. In this context, the Bundespatentgericht wondered about the significance of the acronym BGW at the beginning of the composite mark ‘BGW Bundesverband der deutschen Gesundheitswirtschaft’ (emphasis by the author) when assessing the likelihood of confusion and found that guidance from the Court of Justice of the European Union (CJEU) was potentially conflicting.

Analysis

Bundespatentgericht

German case-law suggested that the word combination (‘Bundesverband der deutschen Gesundheitswirtschaft’) was descriptive of the goods and services covered, while the acronym ‘BGW’ either dominated the overall composite mark or at least retained an independent distinctive role within in, in accordance with the CJEU's guidance in Medion (C-120/04, ECLI:C:2005:594), where the court had held that:

 … beyond the usual case where the average consumer perceives a mark as a whole, and notwithstanding that the overall impression may be dominated by one or more components of a composite mark, it is quite possible that in a particular case an earlier mark used by a third party in a composite sign including the name of the company of the third party still has an independent distinctive role in the composite sign, without necessarily constituting the dominant element (para 30).

However, the German judges found that matters were not quite as clear-cut, in light of potentially conflicting guidance provided in other CJEU decisions, namely Joined Cases Strigl (C-90/11, EU:C:2012:147) and Securvita (C-91/11, EU:C:2012:147) which concerned the registrability of the signs ‘Multi Markets Fund MMF’ and ‘NAI - Der Natur-Aktien-Index’ as trade marks. Notably, these cases related to absolute grounds for refusal of a trade mark due to a lack of distinctiveness and descriptiveness under Articles 3(1)(b) and (c) of the Directive, rather than relative grounds for refusal under Article 4(1)(b). The German court was particularly concerned with the direction provided in paras 32 and 38:

… in each of the two cases, the three capital letters at issue, that is to say, ‘MMF’ and ‘NAI’ respectively, represent the initial letters of the word combinations to which they are attached. Thus, the word combination and the letter sequence, in each case, are intended to clarify each other and to draw attention to the fact that they are linked. Each letter sequence is therefore designed to support the relevant public's perception of the word combination, by simplifying its use and by making it easier to remember.  …

On the contrary … the letter sequence which reproduces the initial letters of the words comprising that word combination occupies only an ancillary position in relation to the word combination. As the referring court suggests, each of the letter sequences at issue, although not descriptive when considered in isolation, may be descriptive when combined, within the mark at issue, with a principal expression, which itself is descriptive as such, of which it is perceived to be an abbreviation.

Applying this guidance, the court found that it was in conflict with the precedent in Medion, if the ‘BGW’ element only assumed an ancillary position in relation to the word combination, then it was illogical to assume that it could at the same time dominate the mark's overall impression and/or retain an independently distinctive role within the overall composite mark. Ultimately, this would lead to the result that there could be no likelihood of confusion between BGW and ‘BGW Bundesverband der deutschen Gesundheitswirtschaft’, a conclusion with which the German court did not agree. However, the court also found that the relevant public's perception of a mark cannot vary depending on the type of grounds for refusal, and decided to suspend its proceedings and refer the question to CJEU for further guidance in a preliminary ruling.

The court referred the following question to the CJEU:

In the case of identical and similar goods and services, there may be taken to be a likelihood of confusion for the public if a distinctive sequence of letters which dominates the earlier word/figurative trade mark of average distinctiveness is made use of in a third party's later mark in such a way that the sequence of letters is supplemented by a descriptive combination of words relating to it which explains the sequence of letters as an abbreviation of the descriptive words?

Advocate-General's Opinion

Advocate-General Mengozzi's Opinion in essence agreed with the German Federal Patent Court's underlying conclusion that the guidance in Medion was applicable, whereas the precedents in Strigl and Securvita did not apply in the present case, particularly due to the different factual and legal framework of Articles 3 and 4 of the Directive. Inter alia, conducting an empirical analysis, AG Mengozzi took the view that, in Strigl and Securvita, the acronyms occupied an ancillary position in relation to the word combinations they represented. This followed from the public's perception of the existence of a link between the acronyms and word combinations, in which they were recognized as abbreviations. In view of this interdependence between the marks' mutually descriptive components, the AG concluded that the acronyms' potential distinctiveness could not be passed on to the marks as a whole and excluded the possibility that their ancillary position had any bearing on the likelihood of confusion examination.

AG Mengozzi further explained that, as usual, the likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case, on the basis of the overall impression conveyed by the marks, bearing in mind their distinctive and dominant components, as well as the public's perception in relation to the goods and services covered. Moreover, the assessment of the likelihood of confusion can be determined in connection with the mark's dominant component only when all other components are negligible. Applying Medion, the AG held that it was crucial whether the earlier BGW mark retained an independent distinctive position within the later composite mark or whether the acronym BGW represented a separate logical unit with its own distinctiveness due to the interdependence between the acronym and the word combination ‘BGW Bundesverband der deutschen Gesundheitswirtschaft’.

When assessing the likelihood of confusion between ‘BGW’ and ‘BGW Bundesverband der deutschen Gesundheitswirtschaft’, the AG took the view that the CJEU would have to take several factors into consideration: (i) the relevant public and its level of attention, (ii) the nature and types of goods and services involved, (iii) the position of the acronym BGW in the later mark, (iv) the descriptiveness of the word combination ‘Bundesverband der deutschen Gesundheitswirtschaft’, (v) the likelihood that the relevant public would immediately interpret BGW as acronym for the word combination, (vi) the ‘link’ between the components of the composite mark and (vii) how this interdependence would affect how the earlier BGW mark would be recalled in the mind of the consumer.

Practical significance

The German Federal Patent Court's reference is not just of academic relevance but could have potentially far-reaching effects on the assessment of a likelihood of confusion as outlined by the AG in his opinion: if the acronym, which is shared by both marks, is devoid of an independent distinctive role within the composite mark, it cannot at the same time influence the public's perception of the composite mark and its overall impression. Consequently, it will then be unable to cause a likelihood of confusion with the earlier BGW mark. However, a likelihood of confusion would logically have to be assumed where the relevant public is aware of the existence of the earlier BGW trade mark and interprets it to have the meaning the later mark and, thus, associates it with the same commercial origin.

While the AG's opinion is logical, it will have to be seen whether the CJEU will follow his reasoning to the last detail, notably whether a likelihood of confusion may only have to be assumed where relevant public interprets the earlier acronym mark as having the same meaning the later mark. Conceivably, consumers may recall the earlier trade mark and may not necessarily believe it to have the same meaning as the later composite mark and nonetheless be confused.

The EU General Court provides guidance on own name, unfair advantage and late evidence in trade mark proceedings

Author: Kirsten Toft (Virtuoso Legal, Leeds, UK)

Kenzo Tsujimoto v OHIM, Case T-393/12, 22 January 2015 (unreported)

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv085, first published online: May 15, 2015

Upholding a decision of OHIM's Board of Appeal, the EU General Court has found that Mr Tsujimoto's wish to register his first name, Kenzo, as a Community trade mark (CTM) was ‘without due cause’ and therefore took unfair advantage of the eponymous mark of luxury fashion brand Kenzo within the meaning of Article 8(5) of the Community Trade Mark Regulation 207/2009.

Legal context

Kenzo Tsujimoto, owner of US-based Napa Valley winery Kenzo Estate (makers of, among others, the Asatsuyu Sauvignon Blanc), applied in November 2009 to register the word mark KENZO as a Community trade mark (CTM) for ‘Wine; alcoholic beverages of fruit; western liquors (in general)’ in class 33. In June 2010, luxury French fashion brand Kenzo, founded by the notable Japanese designer Kenzo Takada and owned by the LVMH luxury fashion conglomerate, opposed the application on the basis of Article 8(5) of the Community Trade Mark Regulation 207/2009 (‘the Regulation’), citing its earlier Community word mark KENZO covering cosmetics in class 3, leather goods in class 18 and clothing in class 25.

The Office for Harmonisation in the Internal Market's (OHIM's) Opposition Division rejected the opposition, but that decision was reversed by the Second Board of Appeal. Mr Tsujimoto appealed to the General Court.

Facts

Mr Tsujimoto argued that, in failing to address his argument concerning his wish to use his forename, Kenzo, for a certain range of goods, the Board of Appeal had breached its duty to provide a statement of reasons under Article 75 of the Regulation. The General Court disagreed. Although Article 75 required OHIM to state reasons on which its decisions were based, there was no obligation ‘to take a position on all the arguments relied on by the parties before them’, and presenting ‘the facts and legal considerations having decisive importance in the context of the decision’ was sufficient (see Matratzen Concord v OHIM—Barranco Schnitzler, T-351/08, ECLI:EU:T:2010:263). Accordingly, the Board of Appeal's response that ‘no due cause [had] been demonstrated’, albeit short, was nevertheless adequate.

Observing that the Regulation did not confer an unconditional right to register a forename or a surname (see Prinz von Hannover v OHIM, T-397/09, ECLI:EU:T:2011:246), the court concluded that there was no due cause under Article 8(5) based on the fact that Mr Tsujimoto's first name was Kenzo.

Mr Tsujimoto also argued that the Board of Appeal had infringed Article 76(2) of the Regulation by considering evidence produced by Kenzo after 18 May 2012, the Opposition Division's deadline. Once again the General Court disagreed. The court stated that Article 76(2) had to be read in the light of Rule 50(1) of the Implementing Regulation (2868/95) and not, as Mr Tsujimoto contended, Rule 20(1). Following Rintisch (C-120/12 P, ECLI:EU:C:2013:638), the court clarified that the third subparagraph of Rule 50(1) expressly provided that, when examining an appeal of an Opposition Division decision, the Board of Appeal enjoyed the discretion conferred under Article 76(2) to decide whether it was appropriate to consider ‘additional or supplementary facts and evidence not submitted within the periods prescribed or specified by the Opposition Division’. The court also clarified that, as in Rintisch, when OHIM adjudicated in the context of opposition proceedings, accepting late factual or evidentiary submissions was likely to be justified where OHIM considered, first, that the late submission was, on the face of it, ‘genuinely relevant to the outcome’ and, secondly, that ‘the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters from being taken into account’.

In the court's view, Kenzo's late evidence was genuinely relevant. The court observed that the Board of Appeal had found that this evidence, even though it was submitted by Kenzo primarily to establish use of its earlier mark, provided supplementary evidence of that mark's reputation as use of a trade mark is a relevant factor in assessing reputation, and also confirmed the evidence on reputation submitted by Kenzo before the deadline. The court also found that, among other things, the evidence in question had been submitted before the Opposition Division reached its decision and before proceedings were begun in the Board of Appeal, meaning that the evidence was not submitted at a late stage in the proceedings as Mr Tsujimoto contended. All in all, the Board of Appeal had not infringed Article 76(2) by taking into account the evidence submitted after the deadline.

As regards Article 8(5), the court found that, first, Kenzo's earlier trade mark had a reputation based on Kenzo's evidence submitted before and, as just held, after the deadline. In particular, the evidence submitted ahead of the deadline included 400 pages on Kenzo's global advertising campaigns for its mark, covering several EU States, between 2000 and 2010, and a monograph on Kenzo Takada which, as Kenzo pointed out, was in the same series of monographs dedicated to other legendary fashion figures such as Chanel, Versace and Valentino.

Secondly, contrary to Mr Tsujimoto's view, there was a risk of an unfair advantage. Both of the marks were identical, and the earlier trade mark was inherently distinctive and had a substantial reputation. The court stated that the Board had correctly inferred that, since Kenzo's goods were at ‘the high end of the market’ for a consumer with ‘more sophisticated taste than the average consumer’ and the mark applied for by Mr Tsujimoto ‘included high-quality wines and cognac intended for equally sophisticated consumers’, a link between those goods could be established since they all ‘projected images of luxury, glamour, good taste, and social status’. Moreover, Kenzo's earlier trade mark, as the Board of Appeal found, had ‘undisputable allure’ which could readily be transferable to other luxury goods including cognac, champagne or wine. Finally, as established earlier, there was no due cause. For these reasons, the General Court dismissed Mr Tsujimoto's appeal.

Analysis

As far as the General Court is concerned, there is only room for one Kenzo in the luxury brand market. EU trade mark law does provide an ‘own name’ defence to infringement (see Article 12 of the Regulation) but, as the General Court pointed out, there is no unconditional right to register one's own name as a CTM pursuant to the Regulation.

Practical significance

The practical issue for Mr Tsujimoto is whether this decision affects his ability to trade in the EU at all under the ‘Kenzo’ name, assuming that his plan is to extend distribution of his, by all accounts, very expensive Californian wine. In Reed Executive plc v Reed Business Information Ltd [2004] EWCA Civ 159, Jacob LJ referred to Gerolsteiner Brunnen v Putsch (C-100/02, ECLI:EU:C:2004:11) in concluding that a man may use his own name even if there is some actual confusion with a registered trade mark, albeit that the amount of confusion which could be tolerated was a question of degree. Gerolsteiner, a much criticised decision on honest use, may not help Mr Tsujimoto when it comes to Article 8(5) and unfair advantage, however, particularly as the General Court here acknowledged that Kenzo's ‘undisputable allure’ could readily be transferable to wine.

Following Rintisch v OHIM, this case also provides useful guidance on the admissibility of late evidence in the context of OHIM opposition proceedings.

How to justify decisions while rejecting evidence

Author: Tomasz Rychlicki (Patent and Trade Mark Attorney, Poland)

CEDC International sp z oo v Office for Harmonisation in the Internal Market, Case T-235/12, ECLI:EU:T:2014:1058, General Court of the European Union, 11 December 2014

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv081, first published online: May 5, 2015

The General Court has clarified rules on the basis of which the Office for Harmonisation in the Internal Market (OHIM) may reject material evidence supplied by the proceedings party after the expiry of the prescribed time-limit.

Legal context

Articles 75, 76(1) and 76(2) of Council Regulation 207/2009 on the Community trade mark (CTMR) provide that decisions of the Office for Harmonisation in the Internal Market (OHIM) must state the reasons on which they are based. In proceedings before OHIM, the Office examines the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, OHIM is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. The Office may disregard facts or evidence which are not submitted in due time by the parties concerned.

Facts

Underberg AG applied to register a three dimensional CTM in class 33 for goods such as spirits and liquors. The sign was described as a greenish-brown blade of grass in a bottle, the length of the blade of grass being approximately three-quarters of the height of the bottle.

The Polish company Przedsiębiorstwo Polmos Białystok (Spółka Akcyjna), which was replaced by the applicant, CEDC International sp z oo, following a merger by acquisition in 2011, opposed. Polmos Białystok based its opposition, inter alia, on an earlier three-dimensional French mark registered for goods in class 33 such as alcoholic beverages. The French trade mark was described as a bottle inside which a blade of grass was placed almost diagonally. The opponent also relied on other national registrations valid in Germany, Poland, Japan and France and different unregistered signs claimed in various Member States of the EU.

The opposition was fully dismissed by the OHIM. According to the Office, the evidence was insufficient in order to establish genuine use of the earlier three-dimensional French mark and that the mark in which it was registered was transformed by the existence of the word ‘żubrówka’ on the label as well as by the portrayal of a bison on its marketed bottles.

CEDC appealed against the decision of the Opposition Division and, two months later, it lodged its statement setting out the grounds of the appeal, appended to which was evidence of use which had not been adduced before the Opposition Division.

The OHIM Board of Appeal dismissed the appeal in its entirety. CEDC brought an action before the General Court claiming, inter alia, infringement of Articles 75 and 76(1) of the CTMR.

Analysis

The Polish company argued that OHIM did not examine certain facts and failed to point out the grounds for such action, in that it did not take into consideration representations of the product from different perspectives presented by the trade mark applicant. Further, a variety of press articles and messages published on websites which showed the blade of grass in a bottle were disregarded by OHIM as being evidence that French consumers regarded the blade of grass as a distinctive feature which related to the nature of use of the mark. CEDC argued that the Board of Appeal did not criticize the admissibility of the evidence appended, but failed to provide the reasons for its assessment of the admissibility of that evidence. As OHIM did not do so, no criticism as to the admissibility of the evidence had been made. CEDC argued that, since the Board of Appeal neither rejected the evidence nor denied its probative value, it was obliged to take it into account and examine it. Failure to do so constituted an infringement of Articles 75, 76(1) and 76(2).

The plea was ruled lawful by the General Court in that the Board of Appeal did not exercise its discretion with an objective way to conclude whether any evidence in addition to that provided for the first time after the time-limit set by the Opposition Division was required. The court noted that, if the Board of Appeal did not exercise its discretion, it could not have stated that the evidence was admissible.

The court also ruled that OHIM was incorrect in replying that, because the Board of Appeal did not include that new evidence in its assessment of the nature of use that must be construed as meaning that it decided not to take it into account. In fact, as the Board of Appeal did not exercise its discretion, it could not have made an implicit finding that that evidence was admissible. Even if it could be considered that OHIM did exercise its discretion as to whether or not to allow the evidence, it must be borne in mind that, according to the case-law, where OHIM exercises its discretion to decide whether to take into account a document that has been submitted out of time, it must give reasons for its decision on the matter. Further, using the term ‘among others’ could not be treated as an objective exercise of such discretion when used for dismissing that evidence.

The court annulled the challenged decision and remitted the appeal to OHIM in order to judge if any evidence in addition to that provided by the applicant for the first time should be considered so that a decision could be made, in view of the guidance from the case law and the present judgment, as well as taking into account circumstances and presenting reason for the decision.

Practical significance

The conclusions presented in this judgment will undoubtedly contribute to increased legal certainty and sound administration in the case of a decision issued by OHIM, in particular through the obligation to justify its decisions in the context of all the evidence presented by the party to opposition proceedings.

From pillar to post: Volvo's road-trip in the opposition against Solvo

Author: Esther B. Schnepper (Institute for Information Law (IViR), University of Amsterdam)

Case T-394/10 Elena Grebenshikova v OHIM, General Court of the European Union (Third Chamber), 5 December 2013

Journal of Intellectual Property Law & Practice (2014), doi: 10.1093/jiplp/jpu036, first published online: March 25, 2014

In this recent case, the General Court of the European Union (GC) annulled the decision of the Board of Appeal of the Office for Harmonisation in the Internal Market (OHIM) concerning the opposition of Volvo against registration of the trade mark SOLVO, reasoning that there was no likelihood of confusion given the particularly high degree of attention of the relevant public and the inevitability of visual perception of the mark.

Legal context

Article 8(1)(b) of Regulation 207/2009 on the Community trade mark provides that a trade mark shall not be registered in the case of likelihood of confusion with an earlier trade mark in the territory in which the earlier mark is protected, in view of its identity with, or similarity to, the earlier mark and the identity or similarity of the goods or services covered by the trade marks. Settled case law further explains that a likelihood of confusion is constituted by either the impression of the public that the goods or services in question come from the same undertaking or by the impression that these come from economically linked undertakings. Whether there is likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case.

Facts

The present case concerns the on-going dispute between Volvo, the well-known producer of cars, and Ms Elena Grebenshikova, who wished to obtain a trade mark that contained the word SOLVO. Grebenshikova applied to register a figurative mark for ‘computer programs for warehouse management systems and computer programs for container terminal systems’ (Class 9) in 2003, whereupon Volvo filed an opposition in 2005 based on the grounds referred to in Article 8(1)(b), as Volvo's trade mark covers not only ‘vehicles’ (Class 12) but other categories such as ‘computer software’ (Class 9). The opposition was also based on Article 8(5), which provides that taking unfair advantage of the reputation of the earlier mark leads to denial of the registration. The Article 8(5) ground is not discussed further, as this case concentrated on the assessment of likelihood of confusion of Article 8(1)(b).

The opposition procedure proved to be a long journey. Initially the opposition was rejected twice, both by the Opposition Division and the Second Board of Appeal, according to which no similarity existed between the marks and consequently Article 8(1)(b) did not apply. However, in an earlier judgment of 2009 the General Court of the European Union (GC) found that the existence of phonetic similarity was sufficient for the applicability of Article 8(1)(b) and that, accordingly, a global assessment of the likelihood of confusion should be made. Subsequently, the case was referred to the First Board of Appeal, which upheld the opposition and rejected the application. The Board of Appeal reasoned that Volvo's reputation in the field of cars led up to the mark having a higher degree of distinctive character for goods such as computer software, particularly given the fact that most cars use computer software. Moreover, purchasing the software did not necessarily imply visual perception of the mark, as the software could be ordered orally. Also the decisive factor in the act of purchase would be the content rather than the visual aspect of the software. Consequently, according to the Board of Appeal, the visual differences did not outweigh the phonetic similarities and therefore likelihood of confusion did exist. In the case in question the GC evaluated the latter judgment of the Board of Appeal.

Analysis

The relevant public

First the GC considered the Board of Appeal's interpretation of the relevant public. Indeed, the product of Grebenshikova was directed exclusively to professionals in the warehouse or container terminal sector: this specialist public was correctly assumed to have a high degree of attention. However, given that purchasing the software would not happen on a daily basis, that the purchase would be a significant investment and that the software would be an essential work tool within the company, the GC found that, instead of a relatively high degree of attention, the relevant public's degree of attention should be particularly high when comparing goods from different producers operating on the market.

Likelihood of confusion

After reaffirming that there was no visual (or conceptual) but only phonetic similarity between the signs, the court assessed the likelihood of confusion. An important basic assumption regarding this assessment was that the visual, phonetic or conceptual (dis)similarities are not always of equal importance, but their weight might fluctuate according to the circumstances of the situation. In the present case, this could result in the phonetic similarity being counterbalanced by their visual dissimilarity, when the marketing of the product would necessarily involve visual perception of the mark by the public.

The GC took the view that such was the case. A purchasing specialist company is assumed to examine scrupulously the characteristics of the goods and the identity of the producers. After all, the purchase of such software entails a significant investment and a high impact on the logistical effectiveness of the company. Further, introducing new software for the logistic system would at least require installation on specialised software and training of the staff using the new system. Before deciding on the purchase of this type of software, it is therefore highly plausible that an elaborate selection process would take place, which may include visiting the producer's website, studying the written presentation of the software, having meetings with the producer's employees and using a trial version of the product. The argument that initially the software trade mark would be referred to orally, as OHIM had put forward, could not alter the conclusion of the court that visual perception of the mark before purchase of the product was inevitable. Consequently, in consideration of the particularly high degree of attention of the relevant public, the scale tipped to no likelihood of confusion and the opposition was annulled.

Practical significance

The judgment of the GC illustrates the complexity of the assessment of likelihood of confusion. Many factors are of importance, each carrying a different weight in different circumstances. The judgment reaffirms the casuistic character of the assessment, as all possible conditions in practice should be taken into consideration. Apparently the degree of attention of the relevant public can be divided into sublevels; in any case into a relatively and a particularly high attention. Further, the manner of marketing and the purchasing process should be investigated conscientiously, as the (absence of) visual or phonetic perception influences the outcome of the assessment. Apart from the legal significance this judgment also illustrates how a trade mark opposition procedure can linger for years; more than ten years have already passed since Grebenshikova filed the application. For trade mark conflicts this is not an unusual time span, but, as appropriately observed in the IPKat article ‘When Volvo met Solvo: a lesson in EU trade mark law’ (here), ten years is quite some time when compared to the life of for instance a patent or an unregistered Community design. Additionally, the results of the various instances can differ significantly, sending the parties from pillar to post. The present judgment for example has the same outcome as the initial two instances, yet on different grounds. However, this GC judgment might not be Volvo's final destination; Volvo could try its last luck at the Court of Justice of the European Union, with possibly yet another conclusion.

Hong Kong media group has no protectable goodwill in the UK; its Community trade mark is ‘now’ invalid

Authors: Joel Smith and Laura Deacon (Herbert Smith Freehills)

Starbucks (HK) Limited and Another v British Sky Broadcasting Group Plc and others [2013] EWCA Civ 1465, Court of Appeal, England and Wales, 15 November 2013

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpt257, first published online: January 26, 2014

The Court of Appeal unanimously upheld the High Court's decision that, based on the evidence, the claimant (a Hong Kong-based media group) did not have a valid Community trade mark (CTM) or any goodwill in the UK that would give it the right to prevent BSkyB from using the name ‘NOW TV’ in relation to BSkyB's Internet protocol TV service. The appeal considered the requirement of distinctiveness for a CTM to be valid and whether a reputation established outside the UK could give rise to goodwill in the UK to support a claim for passing off.

Facts

Starbucks, a Hong Kong-based media group unrelated to the coffee shop chain, provided an Internet protocol TV (‘IPTV’) service in Hong Kong under the name ‘NOW TV’ with some of the programmes accessible in the UK via the Internet. Starbucks owned a Community trade mark (CTM) in respect of television and telecommunication services for the word ‘now’ (in lower case). The CTM was considered to be figurative because the ‘o’ in the word ‘now’ was depicted with six lines radiating from it so that it appeared like a star or sun. In 2012, BSkyB announced, and later that year launched, a new, stand-alone, IPTV service in the UK under the name ‘NOW TV’. Starbucks commenced proceedings in the UK for infringement of its CTM and for passing off. In the High Court, Arnold J held that Starbucks' CTM was invalid and that the passing-off claim failed. Starbucks appealed.

Legal context

In the High Court, the CTM was held invalid under Article 7(1)(c) of Regulation 207/2009 (the CTM Regulation) on the basis that the word ‘now’ would be considered by the average consumer to be descriptive of the services provided under the mark or was descriptive of a characteristic of those services.

In relation to the passing off claim, the High Court accepted that UK customers could access the claimant's Hong Kong website. However, the website was targeted at consumers in Hong Kong. This was not enough to establish goodwill in the UK. While the court recognized that the claimant had made preparations for the launch in the UK of its own IPTV service with the name ‘Now TV’, this did not give rise to a protectable goodwill. Starbucks appealed. In the High Court, BSkyB relied on Article 7(1)(b) and (c) of the CTM Regulation in support of their claim that the CTM was invalid. For the purposes of the appeal, it was agreed that invalidity under 7(1)(c) also resulted in invalidity under 7(1)(b).

Analysis

By Article 7(1)(c) of the CTM Regulation, ‘[t]rade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, intended purpose, value, geographical origin or the time or production of the goods or of the rendering of the service, or other characteristics of the goods or service’ shall not be registered.

The Court of Appeal confirmed that the effect of this provision is that a sign which designates a characteristic of the relevant service is devoid of any distinctive character: this CTM was devoid of any distinctive character that was able to distinguish Starbucks' services from those offered by other undertakings. The mark itself was not inherently distinctive and the mark had not acquired distinctiveness through use. This did not mean that the word ‘now’ could never be distinctive of a service. Depending on the relevant context, a word could be used in a distinctive way or a descriptive way. It was open to the claimant to choose or invent many other words to identify its IPTV service. However, the claimant had selected a commonplace, easily understood, ordinary English word as its trade mark. It was the instant availability of the programming of the claimant's on-demand service that made it attractive to consumers—the attractive characteristic of the service was its ‘nowness’.

The Court of Appeal therefore confirmed that Arnold J made no error in his determination that the average consumer of the claimant's service would understand the mark ‘NOW’ to designate the attractive instant and immediate characteristic of the service. The mark ‘NOW’ described something about the service, its immediacy: the claimant's CTM was thus invalid.

In relation to the passing-off claim, the main issue was whether Starbucks had ‘customers’ of its IPTV service in the UK who would count as customers for the purposes of supporting the passing-off claim. The discussion focused on the Court of Appeal's previous decision in Anheuser Busch Inc v Budjovicky Budvar NP [1984] FSR 413 that, even though the claimants' beer was on sale to servicemen at US military bases (and a few other locations) in the UK, this did not amount to the beer being available in the UK: the claimants had no customers and were not carrying on a business in the UK. Accordingly, Anheuser Busch had no protectable goodwill in the UK.

In order to establish protectable goodwill in the UK, Starbucks relied on the availability there of its Chinese language TV programmes on its website, ‘now-tv.com’ and on the availability of access to its videos on YouTube under the NOW TV brand, which had been viewed around 238 000 times. Starbucks also cited the availability of a small number of its programmes on video services provided by various international airlines flying to and from the UK, together with its plans to expand its television service to the UK.

The Court of Appeal acknowledged that goodwill can be established without the need for customers to be charged and also in circumstances where the customers are a non-English speaking ethnic minority. It was also possible to establish goodwill in a service by advance advertising and promotional activities. However, the Court of Appeal determined that the actions of Starbucks and the accessibility of the claimant's service in the UK were not sufficient to establish a goodwill in the UK. The legal requirement in order to succeed in a claim of passing off is having goodwill and customers in the UK. Even in circumstances where the Internet is widely available, access in the UK to programmes originating from Hong Kong is not sufficient to establish goodwill and a customer base in the UK. Finally, Starbucks' plans were insufficient to establish goodwill. Further steps, such as promotion or advertising, would be required to have a protectable goodwill in the UK. Therefore, Starbucks' appeal was dismissed.

Practical significance

In the event that there is an appeal to the Supreme Court, Starbucks expressly reserved the right to argue whether there is a legal requirement for customers to be in the UK in order to succeed in a passing-off claim in the light of the obiter remarks made by Lloyd LJ in Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd [2010] EWCA Civ 110, that it might be salutary to review the requirement for customers to be in the UK for the kinds of service offered providers operating from abroad.

The current case highlights two important reminders for brand owners. First, a prudent brand owner should create and develop a distinctive brand that cannot be considered to be descriptive of the goods or services provided under that brand.

Secondly, owners of brands that are well-known outside the UK but without a business presence in the UK are at risk of not being able to demonstrate goodwill in the UK that is sufficient to support a successful passing-off claim. However, owners of brands that are well known outside the UK may be able to rely on s 56 of the Trade Marks Act 1994 which gives the owner of a trade mark that is famous outside the UK (and which is entitled to protection under the Paris Convention), the right to apply for an injunction to prevent the use of an identical or similar mark in relation to identical or similar goods or services.

I say doughnut and you say dónut: why is the CTM system ‘different’

Author: Laetitia Lagarde (Studio Legale Jacobacci, Torino)

Case T-569/10 Bimbo v OHMI—Panrico (BIMBO DOUGHNUTS), General Court (Seventh Chamber), 10 October 2012

Journal of Intellectual Property Law & Practice (2013) doi: 10.1093/jiplp/jpt028, first published online: March 21, 2013

The General Court upheld the likelihood of confusion between BIMBO DOUGHNUTS and the earlier Spanish mark DOGHNUTS, thus allowing a Spanish pastry maker to prevent its competitor from using the word ‘doughnut’ for its products, on the grounds that a large part of the Spanish public does not speak English and will perceive the similar element as a fantasy word.

Legal context

According to Article 8(1)(b) of Council Regulation 207/2009 on the Community trade mark (CTMR), upon an opposition filed by the proprietor of an earlier trade mark, the trade mark applied for may not be registered if, due to the fact that it is identical or similar to an earlier trade mark and to the goods or services covered by the trade marks, there exists a likelihood of confusion by the public in the territory in which the earlier trade mark is protected.

Further, the fact that an element of a composite trade mark is in itself a trade mark with a reputation may play a part in the appraisal of the relative weight of the various components of the composite mark. Thus, if one element of a composite mark is itself a mark with a reputation, it may, by the same token, play a more important role in the composite mark.

However, the mere fact that one element of a composite mark formed of two elements plays a more important role than the other does not automatically mean that the comparison between the marks at issue can be limited to considering the former element. Indeed, it is only if all the other components of the mark are negligible that the assessment of similarity can be carried out solely on the basis of the dominant element (see Case C-334/05 OHIM v Shaker [2007] ECR I-04529).

Facts

The OHIM Opposition Division and the Board of Appeal (BoA) had upheld the opposition brought by Panrico (the ‘opponent’) against the CTM application filed by Bimbo, on the basis of Article 8(1)(b) CTMR.

The BoA noted that ‘doughnut’ was an English word meaning a ‘ring-shaped small spongy cake made of dough’. The word does not exist in Spanish, where its equivalents are ‘dónut’ or ‘rosquilla’. Thus for the average Spanish consumer (excluding those who speak English) the word ‘doughnut’ did not describe the goods in question or their qualities and did not have any particular connotation in relation to them: the earlier sign (like the applicant's mark) would be perceived as a foreign or fantasy term by most consumers.

Taking account of the average distinctiveness of the earlier trade mark, the BoA, in an overall assessment of the likelihood of confusion, concluded that owing to the average degree of visual and phonetic similarity between the signs, there was a likelihood of confusion on the part of the relevant consumers for all the goods at issue, which were found to be identical.

Bimbo appealed against the BoA decision which was dismissed by the General Court.

Analysis

Neither party disputed that the goods concerned were identical in Class 30, since the ‘pastry and bakery products, specially doughnuts’ claimed for the applied-for mark were included in the category of ‘all kinds of confectionary and pastry products’ protected by the earlier trade mark.

Regarding the comparison of the signs, the applicant claimed infringement of Article 8(1)(b) CTMR relying on two arguments: (i) the word ‘doughnuts’ is descriptive of the goods in question and has no distinctive character, even for Spanish consumers. (ii) Further, BIMBO is one of the best known trade marks in Spain: since it was the only distinctive element of the applied-for mark, there was no likelihood of confusion with the earlier mark.

As to the first argument, considering the distinctiveness of the word ‘doughnuts’, the court rejected Bimbo's arguments and evidence regarding the level of English spoken and understood by the Spanish consumer. In its view the Spanish public generally has a low degree of familiarity with the English language (see Case T–104/01 Oberhauser v OHIM—Petit Liberto, 23 October 2002).

The applicant's argument that knowledge of English in Spain is steadily increasing, particularly among young people, did not refute the fact that, according to the fairly recent study submitted by the applicant itself, almost 50 per cent of Spaniards have no command of any foreign language.

Thus the part of the relevant public which did not speak English would not realize, on seeing the word ‘doughnuts’, that ‘dónuts’ was the Spanish transcription of that word. It was therefore unnecessary to decide whether the word ‘dónut’ was regarded by the Spanish consumer as a generic term denoting doughnuts, or whether ‘dónut’ was regarded as denoting a trade mark with a reputation which belongs to the opponent.

The opponent had produced a survey of Spanish consumers which demonstrated that more than 80 per cent of the interviewees stated that they did not know the meaning of the word ‘doughnuts’. The applicant criticized that survey on the grounds that the researcher only showed the word to the interviewees but did not speak it aloud. The court found that the method employed in the survey in question was justified due to the nature of bakery and pastry products, in particular those bearing a trade mark, which are often purchased in self-service shops and are consequently bought on sight, without their trade mark being spoken aloud. The method chosen when the survey was conducted of showing the word ‘doughnuts’, without saying it, thus reflected what actually occurs in a large number of bakery and pastry product purchases.

Regarding the second argument, the BoA did not explicitly address the applicant's argument based on the reputation of the ‘bimbo’ element of the applied-for mark in the contested decision. However, the court found that the ‘doughnuts’ element in the applied-for mark ‘would catch the attention of the relevant Spanish public, as it appears unusual in Spanish due to the atypical combination of vowels “ou” and the accumulation of consonants “ghn”’. Thus the ‘doughnuts’ element could not be considered negligible in the overall impression since it was longer and the word ‘doughnuts’ would attract the Spanish public's attention because it appeared atypical in Spanish owing, in particular, to the sequence of the consonants ‘ghn’.

Thus the 'doughnuts’ element, which is nearly identical to the earlier trade mark, had an independent and distinctive role in the CTMA. Further, since the 'doughnuts’ element was wholly meaningless for that consumer, the mark applied for, BIMBO DOUGHNUTS, did not form a unitary whole or a logical unit on its own in which the ‘doughnuts’ element would be merged with the ‘bimbo’ element. The part of the relevant public which was not familiar with English would not be able to understand the sign at issue as meaning that the goods concerned were doughnuts produced by the undertaking Bimbo.

Since bakery and pastry products are everyday low-cost consumer goods, the public must be considered to have a somewhat reduced level of attention when purchasing them, and due the average degree of visual and phonetic similarity between the trade marks at issue, the BoA was correct in concluding that there was a likelihood of confusion.

Practical significance

This judgment falls within the implementation of a well-noted case in 2012 (see Case C-196/11 Formula One Licensing BV v OHIM, 24 May 2012) in which the court reiterated the coexistence between CTMs and national trade marks and found that the validity of a national trade mark may not be called into question in the opposition proceedings of a CTM.

The court had previously held in 2007 that the word ‘dónuts’ was not generic in Spain where the average consumer perceives it as distinctive sign in relation to pastries, among others goods (see T-334/04 House of Donuts v OHIM—Panrico, 18 April 2007, para 48).

Departing from the basis that it is necessary to acknowledge a certain degree of distinctiveness of a national mark on which the opposition is based, the misspelled ‘doghnut’ sign has enjoyed the same presumption of validity on the Spanish Trade Mark Register (OEPM) since 1994, as has the word ‘dónut’—first registered in 1962. Indubitably, at both the time of registration and today, no Spanish consumer would have perceived the meaning of the word ‘doughnut’ as a description for a pastry made of dough. It is unfortunate that the court did not find it necessary to consider the reputation of BIMBO, thus concluding that the earlier national right prevails, at least until cancellation proceedings are brought in Spain.

Defeat before OHIM no laughing matter for Dave TV

Author: Suzy Schmitz (Kemp Little)

UK Gold Services Ltd v Dave Soho Ltd, OHIM Opposition Division, Case B-1294448, 24 January 2011

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr068, first published online: 16 May 2011

The UK's Dave TV station may need to think creatively about its brand, following OHIM's decision to reject its trade mark application for its key services on the grounds of earlier unregistered rights.

Legal context

Under Article 8(4) of the Community Trade Mark Regulation, a trade mark opposition can be brought before OHIM based on unregistered rights as well as registered ones. More specifically, a party can rely upon an earlier non-registered trade mark of ‘more than mere local significance’, where local laws confer on the owner the right to prohibit the use of a subsequent trade mark.

This case illustrates OHIM's application of the UK law of passing off, the local law which applied in this case given that the parties were UK entities, resulting in a refusal of Dave TV's application for most of its classes of goods and services. In principle, this leads Dave TV facing a rebrand, if not an action for past infringement. However, OHIM's analysis of the ‘classic trinity’ required for passing off is unlikely to survive close scrutiny, so it is reasonable to expect that Dave TV will appeal the decision and that this will not be the end of the proceedings.

Facts

UK Gold Limited, operator of the ‘Dave’ comedy TV channel, applied to register the word mark DAVE as a Community trade mark (CTM) for goods and services in classes 9, 16, 28, 35, 38, and 41. Of these, classes 38 and 41 would appear to be the most crucial for UK Gold's business, given they include ‘broadcasting’ and ‘organization, production, presentation, distribution, syndication, and rental of television programmes’. The filing date of the application was 18 July 2007.

UK Gold's application was opposed by another UK company, Dave Soho Limited, which argued that they held unregistered rights in the UK in relation to classes 9, 16, 35, 38, 41, and 42; Dave Soho did not hold any earlier registered rights for the mark on which to rely. They argued, however, that their earlier unregistered rights were of ‘more than mere local significance’ in the UK, ie they provided the basis for a passing off action, and that they could rely on them for the purpose of Article 8(4). By way of background, Dave Soho is a creative business consultancy involved in advertising, marketing, and communications. The company was incorporated under its current name in 2004 and adduced a variety of evidence to demonstrate that its use preceded UK Gold's application, and was sufficient to establish a case in passing off.

OHIM examined the case first by considering whether Dave Soho's use of the mark DAVE amounted to ‘prior use in the course of trade of a trade mark of more than mere local significance’. To do so it examined the detailed evidence put forward on the opponent's behalf, including history of trading under the name, ownership of URLs containing the mark, annual returns, receipt of industry awards, and examples of client accounts, including Nokia. OHIM explained that its assessment must take into account a number of factors including the territory in which the mark is used, the length of time and economic dimension of use, the relevant consumers, and the extent of advertising of the sign.

Having taken all this into account, OHIM was prepared to find that Dave Soho had used the DAVE mark in relation to goods and services in all of its pleaded classes. It was particularly convinced that the mark had ‘more than local significance’ by the receipt of awards from foreign entities.

OHIM then proceeded to examine Dave Soho's opposition under the UK law of passing off. After accepting that the law in this area is ‘complex’, OHIM summarized the three elements which need to be established. These are (a) that the opponents’ goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature, (b) there is a misrepresentation by the applicant, and (c) the misrepresentation causes damage to the opponent (or is likely to).

Having outlined the points it needed to address, OHIM wasted no time in dealing with them. In considering the first limb, it found that the opponent had goodwill in the UK as a result of the ‘significant commercial volume of use’ as well as the fact that the use was continuous and frequent. In respect of misrepresentation, OHIM examined each of the classes of goods and services (concluding most were identical or similar), and then compared the marks side by side and concluded they were identical. Having carried out these two assessments, OHIM decided that the public would be led to believe that the goods of the applicant originate from the opponent, concluding that a misrepresentation was being made. Its conclusion on damage was equally as affirmative and swift.

Analysis

Oppositions under Article 8(4) of the Community Trade Mark Regulation are relatively infrequent, so it is interesting to see how OHIM applied the UK law of passing off to this case. However, OHIM's approach when assessing whether a misrepresentation had occurred was reminiscent of the way in which it would assess whether a sign is confusingly similar to a registered trade mark, rather than resembling the approach one would expect for passing off. In particular, it did not explore the concept of deception, an important element of a passing off action, and whether Dave TV's use would have this effect on consumers. This leaves an avenue for appeal open for Dave TV.

Practical significance

Given the substantial impact which this decision could have on Dave TV's operations, with the potential need for a full rebrand and the risk of infringement proceedings, it is likely they will be considering all avenues for appeal. OHIM's questionable approach to the law of passing off might provide them with the answer they need. More generally, the case shows that, if a party wishes to bring an opposition under Article 8(4) of the Community Trade Mark Regulation, it is advisable to produce comprehensive evidence of its trading history, which might include sample clients and even industry awards. Ideally, this evidence should span a number of years and be generated from a variety of sources.