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GC confirms that trade mark KERRYMAID cannot be registered in the EU on grounds of the likelihood of confusion with KERRYGOLD

mantequilla, kerrygold, produccion

On 28 June 2011, Kerry Luxembourg Sàrl (“Kerry”) filed the EU trade mark application KERRYMAID (word) for different goods in classes 29 and 30. The Irish company Ornua Co-operative Ltd. (“Ornua”) filed opposition based on 18 earlier marks composed of the sign KERRYGOLD and registered in Classes 1, 5, 29, 30, 32 and 33, invoking Articles 8(1)(b), 8(4) and 8(5) EUTMR.

The Opposition Division upheld the opposition, based on the provisions of Article 8(5) EUTMR, and on the basis of the following trade mark:

kerrygold, logo, vaca, pastar

In December 2013, the applicant lodged an appeal against the Opposition Division’s decision. However, the proceedings before the EUIPO were suspended in light of the infringement action brought before the Spanish courts by Ornua concerning the sale of goods bearing the mark KERRYMAID.

In July 2019, the Board of Appeal ruled on Kerry’s appeal, partially annulling the Opposition Division’s decision and upholding the opposition filed by Ornua on the basis of Article 8(1)(b) EUTMR in respect of all the goods covered by the trade mark applied for, with the exception of “meat, fish, poultry and game” and “preserved, dried and cooked fruits and vegetables” in Class 29. The Board of Appeal concluded that the signs in conflict were similar to an average degree and, therefore, there was a likelihood of confusion in relation to the goods in classes 30 and 29 that were identical or similar to the goods covered by the earlier mark. Moreover, the Board of Appeal held that the peaceful coexistence of the signs in conflict in Ireland and the United Kingdom did not permit the conclusion that there was no likelihood of confusion for the part of the relevant public that is unaware of the geographical reference contained in the term “kerry”.

Kerry’s appeal before the General Court is based on a single plea in law: the alleged infringement of Article 8(1)(b) EUTMR in the Board of Appeal’s decision. Kerry argues that the Board of Appeal erred in concluding that there was a likelihood of confusion between the marks in conflict and it disputes the findings of the Board of Appeal regarding the relevant public’s perception of the geographical name “kerry”, the distinctive character of the earlier mark and the similarity of the signs in conflict.

In its judgment dated 10 March 2021 (T‑693/19), the General Court dismisses Kerry’s appeal and upholds the decision by the EUIPO’s Board of Appeal based on the following findings:

  • Kerry did not put forward any evidence that might call into question the Board of Appeal’s finding that there was no clear indication that the non-English speaking public of mainland Europe would understand the term “kerry” as a geographical indication of the designated goods.
  • Kerry did not furnish any evidence that might call into question the Board of Appeal’s finding that, for the majority of the relevant public, with the exception of the Irish public and possibly the public of the United Kingdom, the term “kerry” included in the earlier mark had distinctive character in relation to the goods for which the mark was registered.
  • Even if it could be considered that the relevant public as a whole would perceive the term “kerry” as a geographical indication when used in relation to the goods covered by the earlier mark, the Board of Appeal’s finding that the word element “kerrygold” is the dominant element of the earlier mark would not be called into question, given that, contrary to Kerry’s contention, said finding was not based solely on the presence of the term “kerry” in the word element “kerrygold” but on the position and size of said element and the lack of distinctive character of the figurative elements of the earlier mark.
  • The Board of Appeal did not err in not considering the figurative elements of the earlier mark to be the dominant and distinctive elements of that mark, given that, as held by the Board of Appeal, the representation of a grazing cow that features in the earlier mark, in relation to milk products, will be perceived by consumers as an element that is descriptive of the nature of the designated goods, and the other figurative elements of the sign (the flowers, the green background, the white lines and the font used) will be perceived as purely decorative elements that cannot convey any message that can be remembered by consumers.
  • The signs at issue are visually and phonetically similar to an average degree due to the common element “kerry”, placed in the first part of the word elements of the signs. Therefore, the Board of Appeal rightly concluded that, even though the signs in dispute are not conceptually similar, they are similar overall.
  • In light of the foregoing, the Board of Appeal rightly concluded that, in the global assessment of the likelihood of confusion, in the case at hand, with regard to the goods covered by the mark applied for which are similar or identical to the goods in Class 29 covered by the earlier mark, there may be a likelihood of confusion for the part of the relevant public which is not aware of the geographical reference contained in the term “kerry” and which corresponds to a large part of the relevant public.

In relation to the objections raised by Kerry concerning the Board of Appeal’s analysis of the likelihood of confusion, the General Court holds as follows:

  • The examination of the likelihood of confusion carried out by the EUIPO necessarily entails an abstract assessment, which is based not on the circumstances in which the goods are marketed, but on the “objective” arrangements for the marketing of the goods covered by the marks in conflict and, therefore, the way in which the earlier mark is used is irrelevant for the purposes of analysing the likelihood of confusion and the Board of Appeal was not obliged to take into consideration the evidence invoked by Kerry.
  • In any case, even if taking that evidence into consideration would have enabled the Board of Appeal to conclude that the term “kerry” had Irish connotations for the relevant public, mere connotations cannot suffice to determine that the relevant public as a whole perceives the term “kerry” as a geographical indication when it is used in relation to the goods covered by the earlier mark, given that to make that determination it would be necessary for there to be a sufficiently direct and specific link between the sign and the goods to enable the relevant public to immediately perceive, without further thought, a description of the goods in question or of one of their characteristics.
  • The judgment by the Court of Justice of 7 January 2004, Gerolsteiner Brunnen (C-100/02, EU:C:2004:11), invoked by Kerry, is not applicable to the case at hand, given that on reading the judgment, it does not appear that the Court of Justice examined whether the term “kerry”, associated with the goods in question, would be understood by the relevant public as an indication of their geographical origin.
  • The Board of Appeal did not err in disregarding the judgments of the Provincial Appellate Court of Alicante and the EU Trade Mark Court issued in the infringement proceedings brought by Ornua, given that the EUIPO is not bound by the decisions of an EU trade mark court delivered in actions for infringement, in the context of the exercise of its exclusive jurisdiction over registration of EU trade marks and, in particular, when, in so doing, it examines oppositions filed against applications to register EU trade marks.
  • With regard to the alleged peaceful coexistence of the marks at issue, contrary to Kerry’s claims, the burden of proof lies with the party claiming that there is peaceful coexistence and, moreover, when the opposition to the registration of an EU trade mark is based on an earlier EU trade mark, the coexistence must be proved for the entire territory of the European Union.

In light of the above, the General Court concludes that the Board of Appeal correctly held that there was a likelihood of confusion on the part of the non-English speaking part of the relevant public between the mark applied for and the earlier mark, within the meaning of Article 8(1)(b) EUTMR, in relation to the goods at issue.

Author: Ana Sanz

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The Court of Justice rules for the first time on the prohibition concerning registration of a trademark filed by an agent

Edificio del palacio de justicia

The Court of Justice issued a judgment on 11 November 2020 (C-809/18 P; MINERAL MAGIC) in which it had the opportunity, for the first time, to establish the requirements that must be fulfilled for application of Article 8(3) of the Regulation on the European Union Trademark (EUTMR).

This precept, which has its origin in Article 6septies of the Paris Convention, concerns the case where an agent (person linked commercially with the proprietor of a foreign trademark) applies in his own name for the trademark of said proprietor without the proprietor’s consent. This is known informally as the case of the “unfaithful agent”.

Edificio del palacio de justicia  

The background to the dispute leading to the judgment in question can be summarised as follows. The UK company JOHN MILLS filed an application for the European Union trademark MINERAL MAGIC to cover a range of goods in class 3. Prior to the application, there was a distribution agreement between JOHN MILLS and the US company JEROME ALEXANDER CONSULTING in relation to goods sold under the designation MAGIC MINERALS BY JEROME ALEXANDER. Having become aware of the filing of the mark MINERAL MAGIC, the US company filed an opposition invoking the application of Article 8(3) EUTMR. They cited, among others, the existence of the registered US trademark MAGIC MINERALS BY JEROME ALEXANDER also covering goods in class 3.

The main issue already addressed in the proceedings before the EUIPO was whether Art. 8(3) EUTMR was applicable when, as in this case, the word designations of the EU mark and the US mark were not completely identical, and the goods covered by the respective marks were not identical either (at least not completely).

Since the dual conditions of identical marks and identical goods were not present, the EUIPO’s Opposition Division rejected the US company’s arguments. However, the subsequent appeal was accepted by the EUIPO’s First Board of Appeal and the mark MINERAL MAGIC was thus refused. The Board of Appeal adopted a flexible interpretation of the provisions of Article 8(3) EUTMR, finding that they could also be applied when the marks in dispute are similar either in respect of the marks or the goods covered.

JOHN MILLS lodged an appeal, which was accepted by the General Court in a judgment dated 15 October 2018 (T-7/17). The General Court essentially adopted a literal interpretation of Article 8(3) EUTMR, which refers to “the trademark”, meaning that, in the opinion of the General Court, the foreign mark and the mark applied for must be the same and, therefore, identical. Moreover, in support of its view, the General Court referred to the preparatory work carried out for the drafting of Regulation 40/94 on the Community trademark. This included a document which expressly indicated that the suggestion of a delegation that the provision concerned should also apply in cases of ‘similar’ trademarks for ‘similar’ goods, had not been adopted. For the General Court, since the wording of Article 8(3) is so clear, there was no need to use other interpretative sources, such as, for example, Article 6septies of the Paris Convention. Consequently, it held that since there was only a mere similarity between the marks in conflict, the conditions for application of Article 8(3) EUTMR were not present.

The Court of Justice, on the other hand, considered that for the application of Article 8(3) EUTMR, it is essential to take into account Article 6septies of the Paris Convention, since the European Union is a member of the World Trade Organization and, as such, is obliged to adhere to the TRIPS Agreement which, in turn, provides that members shall comply with Articles 1 to 12 of the Paris Convention.

While the Court of Justice recognises that in the French-language version (which is the authentic version) of Article 6septies of the Paris Convention the expression ‘cette marque’ is used in reference to the earlier mark, it nevertheless studies the background to the provision. In this regard, the Court of Justice states that in the Acts of the Conference of Lisbon of 1958 (the Conference where the provision was introduced) it is indicated that a trademark applied for by the agent or representative of the proprietor of the earlier mark may also be covered by that provision where the mark applied for is similar to that earlier mark.

Thus, the Court of Justice does not assume that Article 8(3) EUTMR (and its originating provision, Article 6septies of the Paris Convention) only applies where the dual conditions of identical marks and identical goods/services are present and it acknowledges that, in principle, it can also be applied in cases of “similarity”. And in this regard (and for me this argument is very convincing) the Court of Justice clearly states that “if Art. 8(3) EUTMR were only applied in cases where the marks at issue are identical (also including where the goods and/or services are identical), such an interpretation would have the effect of calling into question the general scheme of the European Union Trademark Regulation in that it would result in the proprietor of the foreign mark being deprived of the possibility of opposing, on the basis of Article 8(3), the registration of a similar mark by his agent or representative, even though the agent or representative, following such registration, would be entitled to file opposition, pursuant, in particular, to Article 8(1)(b), against the application for subsequent registration of the initial mark by that proprietor on the ground of its similarity to the mark registered by the agent or representative of that proprietor”.

On the basis of these arguments, the Court of Justice upheld the appeal and even addressed the substance of the matter, finding that in this case the requirements for application of Article 8(3) EUTMR were fulfilled and, therefore, the marks could not be permitted to coexist.

We can therefore conclude that this judgment is of great importance, given that it confirms the necessary conditions for the proprietor of a foreign trademark to be able to prevent the registration of a later mark applied for by his agent or representative. In summary, we can say that the conditions, which are cumulative, are the following.

  1. The first condition is that, specifically in countries where trademarks are acquired through registration, the person intending to exercise his right must be the proprietor of a trademark in a country that is party to the Paris Convention or a member of the World Trade Organization.
  2.  
  3. The second condition is that a commercial relationship must have existed between the applicant and the proprietor of the earlier mark prior to the filing of the contested mark. In this regard, there is agreement that the terms “agent” or “representative” are to be interpreted broadly, including, for example, distributors, as in the case concerned in this judgment.
  4.  
  5. As for the final requirement, on which this judgment has provided clarification, it is not essential for the dual conditions of identical marks and identical goods/services to be present. The provision may also be applied in cases where there is similarity between the marks and similarity in the goods or services claimed by the respective marks.

If these requirements are fulfilled, Article 8(3) EUTMR and Article 6septies of the Paris Convention shall apply,unless, as specified in those legal provisions, the agent is able to justify his actions or has authorisation (which I understand must be express authorisation) from the proprietor of the foreign mark.

 

Author: Jesús Gómez Montero; Former Partner of Elzaburu and Member of the Advisory Board of the Alberto Elzaburu Foundation

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Ultimate victory for MESSI over MASSI

Victoria definitiva de MESSI sobre MASSI

When it seemed that Lionel Messi had finally ceased to be newsworthy after an eventful summer, on 17 September 2020, the Court of Justice of the European Union (CJ) handed down its judgment in cases C-449/18 y C-474/18 on the appeals lodged by the EUIPO and J.M.- E.V. e hijos S.R.L. against the judgment of the General Court (GC).

As a recapitulation of what we already commented at the time, in 2011 the F.C. Barcelona player Lionel Messi filed European Union trademark application no. 010181154, with the following design, at the EUIPO to cover goods in classes 9, 25 and 28:

Logo Messi

As a consequence of said application, the owner of the earlier European Union trademarks nos. 3436607 and 414086 MASSI (word), registered in classes 25 and 9 and 28 respectively, filed opposition on the grounds that there was a likelihood of confusion and/or association (Article 8.1 EUTMR) between the trademark filed by Leo Messi and the earlier MASSI marks.

The EUIPO issued its decision, accepting in full the opposition filed by the owner of the MASSI marks and thus refusing Leo Messi’s application, on the basis that there was a likelihood of confusion between the marks in dispute. As a result, in 2014 Lionel Messi lodged an appeal against the refusal, but the EUIPO dismissed the appeal.

The applicant decided to contest the decision and, in September 2014, he lodged an appeal with the GC on grounds that the marks MESSI and MASSI were perfectly able to coexist on the Register, as the EUIPO had not taken into account the importance of the conceptual aspects when analysing the matter.

The GC accepted the appeal on 28 April 2018, granting the European Union trademark in question, a decision that was appealed both by the EUIPO and J.M.- E.V. e hijos S.R.L.

The CJ has ruled on this, confirming the GC’s findings of 2018, establishing as follows:

  1. In case C-449/18 P (EUIPO), it is ruled that the GC duly took into consideration the perception of the marks MESSI and MASSI by the entire relevant public, when analysing the likelihood of confusion, and not only part of this as argued by the EUIPO. In the opinion of the CJ, this is due to an erroneous interpretation by the appellant of the judgment issued by the GC.
  2. With regard to case C-474/18 P (J.M.- E.V. e hijos S.R.L.), the Court of Justice points out that, in the same way as the reputation of the earlier mark, the possible renown of the person applying to register his name as a trademark is one of the relevant factors to be taken into account when assessing the likelihood of confusion, insofar as that renown may influence the perception of the mark by the relevant public (CJEU ruling of 24 June 2010, Becker/Harman International Industries, C-51/09 P, EU:C:2010:368, paragraph 37). This means that the GC rightly found that the renown of Lionel Messi constituted a relevant factor to establish a difference between the terms “messi” and “massi” on the conceptual front.
  3. Similarly, with regard to the appellant’s allegation that the GC based its ruling on facts and evidence submitted for the first time before the GC, the CJ states that the renown enjoyed by Lionel Messi already formed part of the subject-matter of the proceedings before the EUIPO.

Moreover, the CJ goes on to add that the GC rightly stated that, since the renown of the Messi surname – in reference to the world famous football player and public figure – was well known, it could be known by anyone or it could be found out easily through sources that are readily accessible. These sources were available to the EUIPO when it issued its decision and should have been considered by the EUIPO when it analysed the similarity of the marks MESSI and MASSI from the conceptual standpoint.

  1. Finally, the CJ finds that the appellant interpreted the Ruiz Picasso and others/OHIM (C-361/04 P) judgment erroneously, as its brief of appeal maintained that the GC stated that, under certain circumstances, the conceptual differences can offset the visual and phonetic similarities between the signs in question.

In this regard, the CJ reminds us that a global assessment of the likelihood of confusion implies that the conceptual differences between two signs can offset the visual and phonetic similarities between them, provided that at least one of these signs has a clear and specific meaning from the relevant public’s point of view, in such a way that it can be perceived immediately by said public. Therefore, since the relevant public would perceive the marks in conflict (MESSI and MASSI) as two conceptually different signs, the application of the Ruiz Picasso and others/OHIM (C-361/04 P) judgment was correct.

The message put forward by the CJ in this case – which we believe to be correct – is clear as, independently of the visual and phonetic similarities between two marks, there may not be a likelihood of confusion if there is a marked differentiation on the conceptual front and, thus, Article 8.1 b) would not be applicable.

In this case, said marked difference on the conceptual front is based on the renown of the Argentinian star player’s surname among the relevant public, a well-known fact that should be considered in order to permit the later mark to be granted registration despite the existence of earlier MASSI marks. It seems clear that if Messi’s surname were not well known, the marks MESSI and MASSI would be unable to coexist and, therefore, the subject trademark application should have been refused.

The question we should address now is whether the CJ’s arguments are applicable to cases in which the applicant’s mark is not a personality, but rather a mark that is already widely known and recognised by the relevant public as a result of its use in the marketplace. In other words, could the reputation of a mark be considered a well-known fact by the EUIPO, where the distinctiveness acquired by the mark under application must be considered a relevant factor when analysing the likelihood of confusion with respect to earlier marks?

It remains to be seen what direction EUIPO practice will take in this regard.

Author: Manuel Mínguez

Published previously in Economist & Jurist [in Spanish]

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Amazon not liable for trademark infringement in storing goods offered and sold by third parties

Amazon no infringe marcas ajenas al almacenar productos ofrecidos y vendidos por terceros, según el TJUE

In December 2017, the Court of Justice of the European Union ruled that from the standpoint of the rules on competition, the bar imposed by the company Coty Germany on the members of its selective distribution network, prohibiting them from offering its luxury perfumes on the Amazon e-commerce platform, was lawful.

Amazon not liable for trademark infringement in storing goods offered and sold by third parties  

On 2 April of this year, the CJEU ruled on a new matter referred for a preliminary ruling (case C-567/18) concerning the sale of Coty’s perfumes through the aforementioned platform. However, on this occasion, Coty had brought its complaint directly against Amazon, and the decision went against its interests.

Coty Germany had brought an action against Amazon before the German courts, arguing that Amazon was infringing its trademark rights by storing Davidoff brand perfumes in which its trademark rights were not exhausted. The storage in question formed part of the service provided by Amazon to third-party sellers that were offering goods for sale in the “Amazon Marketplace” section of Amazon’s website in Germany.

The complaint was dismissed and, with Coty having lodged an appeal against the decision on a point of law, the German Federal Court of Justice (Bundesgerichtshof) referred a question to the CJEU for a preliminary ruling, seeking clarification as to whether said storage constituted use of the trademark within the meaning of Article 9 of the Regulation on the European Union Trade Mark. Specifically, it questioned whether it came under the example of use mentioned in Article 9(3)(b) of Regulation No. 2017/1001, which provides for prohibiting third parties from “offering the goods, putting them on the market, or stocking them for those purposes”.

In its ruling on the matter, the Court of Justice first of all pointed to its case law holding that on e-commerce platforms third-party trademarks are used by the sellers of the goods and not by the operators of those platforms (judgment of 12 July 2011, L’Oreal, C-324/09).

With respect to the storage service Amazon provides to third parties who sell goods on its platform, the Court stated that according to the information provided by the referring court, those goods were not offered or put on the market by Amazon itself but by the third-party sellers. It further stated that it follows from this circumstance that Amazon does not use the trademarks in its own commercial communication. Therefore, Article 9 of the Regulation is not applicable to Amazon.

Lastly, the CJEU stated that the above does not preclude the examination of the platform operator’s conduct with respect to the trademarks of third parties from the standpoint of other rules of law, specifically Article 14(1) of Directive 2000/31 on certain legal aspects of information society services or Article 11 of Directive 2004/48 on the enforcement of intellectual property rights. However, since this matter had not been raised by the referring court in this case, the Court of Justice refrained from conducting such an examination, notwithstanding Coty’s petition in this regard.

In summary, the Court of Justice rejects that Amazon may be held directly liable for trademark infringements committed by sellers that use its online sales platform, not even when it stores the infringing goods. Nevertheless, it does not rule out the possibility that the owners of infringed trademarks could request measures against Amazon through application of the rules in the aforementioned directives. In this regard, we must consider the precedent of the aforementioned judgment of 12 July 2011, in which this issue was examined in relation to the eBay platform.

 

Author: Carlos Morán

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Assessment of MWC Barcelona 2019

The Commercial Court of Barcelona and the European Union Trade Mark Courts of Alicante have published their report summarising the application of the duty service and fast-action protocol for the Mobile World Congress held last week in Barcelona (MWC 2019). The information provided in this report will be no surprise for those, such as ELZABURU, having experienced first-hand the procedural peripeteia at this Congress.

  1. The courts have handled and resolved 50 matters in total, representing a 42% increase when compared to those dealt with in 2018.
  1. 38 protective letters were submitted to avoid adopting preliminary injuctions inaudita altera parte, 36 of these in Barcelona with regard to patents and 2 in Alicante in relation to European Union trade marks and designs. They were all processed and resolved within 24 hours.
  1. In order to verify the presence of goods suspect of patent infringement during the trade fair, the court attended 5 petitions for verification of facts procedures, these being processed and granted within a period of 48 hours. 2 of these petitions were notified and carried out by means of seizing samples at the actual inauguration of the Congress.
  1. On the subject of preliminary injunctions inaudita altera parte, the court of Barcelona attended 5 petitions filed and granted within a period of 48 hours before the start of the Congress. The measures were performed while the Congress was underway, with onsite seizure of samples. Curiously, in one of the cases the interested party was able to file a brief of opposition within two days, with the court accepting the opposition and immediately lifting the measures.
  1. ELZABURU followed the MWC 2019 there and then, being involved in 6 legal proceedings, preparing the defence strategy for another 2 cases that took different courses, while attending the Congress onsite to face any incident that could have occurred.

In addition, the actions of the courts of Barcelona and Alicante were exemplary when assessed regarding the judicial response and the efficiency of the mechanisms established in the Protocol. All remaining is to think of MWC 2020!

Author: Enrique Armijo

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