Intellectual Property - Community Trade Mark Application - Intervener

This was a lawsuit before the Court of First Lawsuit of the European Communities ('Court of First Instance') (First Chamber) between Aktieselskabet af 21 November 2001 volt Office for Harmonization in the Internal Market (Trade Simon Marks and Designs) (Case T-477/04) [February 2007].

The applier applied to the Office for Harmonization in the Internal Market ('OHIM) for a Community Trade Mark ('CTM') for the grade 'TDK' in regard of clothing, footwear and headgear. The intervener opposed the application on the evidence of the being of an earlier Community Trade Mark as well as 35 earlier national trade Marks which were registered in regard of social class 9 (apparatus for recording transmittal or reproduction of sound or images).

The earlier tags were a combination of the word grade TDK or the word and a nonliteral mark. OHIM upheld the resistance on the footing of fine art 8(5) of Council Regulation (EC) 40/94 and refused the CTM application. The applier appealed and the Board of Entreaty of OHIM, dismissed the appeal.

The applier then applied to the Court of First Case for the revocation of this decision. The Court of First Case had to see whether the earlier tags had enjoyed a repute and whether the usage of the grade in inquiry would take partial advantage of the typical fictional character or the repute of the earlier marks.

The tribunal held:

§ '…Whilst fine art 8(5) of the ordinance did not define 'reputation', in order to fulfill the demand of reputation, the earlier national grade had to be known to a important portion of the public concerned by the commodity or services covered by that trade mark. In examining that condition, it was necessary to take into consideration all the relevant facts of the case, in particular:-

o the marketplace share held by the mark

o the intensity

o the geographical extent and continuance of its use; and

o the size of the investing made by the project promoting it.

§ The …decision had correctly set out the criteria for the intents of assessing repute within the significance of fine art 8(5) of the ordinance and the Board had not committed any mistake in assessing grounds put forward by the intervener for the intents of establishing the repute of the earlier marks.

§ Having regard to all that material, the …decision had to be upheld in respect of its determination of reputation. The intervener had established the nature, continuance and range of its commercial activities as sees the production, marketing, sponsorship and advertisement of the earlier tags in question. The grounds supported the Board's determination that the earlier tags satisfied the criteria laid down inch the case-law in regard of reputation, namely, that they were known by a significant portion of the public. General Motors [1999] ECR I-5421 considered.

§ The Board of Entreaty was not required to set up existent and present injury to an earlier mark, but rather it had simply to have got available to it Prima facie grounds of a hereafter risk…

§ The conception of taking partial advantage of the typical fictional character of the repute of the earlier tag had to be understood as encompassing cases where there was clear development and free-riding on the coat-tails of a celebrated tag or an effort to merchandise upon its reputation. The stronger the earlier mark's typical fictional fictional character and reputation, the easier it would be to accept that hurt had been caused to it.

§ In the blink of an eye case, the intervener had established the repute of its earlier marks, which had an enhanced distinctive character by ground of the repute attached to them.

§ In the circumstances, the Board had been entitled to take the position on the grounds that were the tag applied for to be used by the applier on sporting clothes (a possibility that could not be ruled out), such as usage would take to the perceptual experience that clothes was manufactured by, Oregon under licence from, the intervener.

§ That in itself was sufficient to represent Prima facie grounds of future risk, which was not hypothetical, of the pickings of partial advantage by the applier of the repute of the earlier marks.'

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© RT COOPERS, 2007. This Briefing Note makes not supply a comprehensive or complete statement of the law relating to the issues discussed nor makes it represent legal advice. It is intended only to foreground general issues. Specialist legal advice should always be sought in relation to peculiar circumstances.