European General Court considers that a reputation of “exceptional strength” can lead to an image transfer within the meaning of Article 8(5) CTMR even for dissimilar goods.

The Tea Board brought oppositions against four Community trade mark applications for figurative signs containing the word DARJEELING in classes 25, 35 and 38 in the name of Delta Lingerie. The latter is a French company whose DARJEELING mark is already well-known for lingerie in France. The Tea Board claimed that there was a likelihood of confusion and a risk of unfair advantage between the four figurative marks and its earlier reputed DARJEELING Community collective marks (word and device) covering “tea” in class 30.

Unsurprisingly, the General Court confirms the Board of Appeal’s analysis of the likelihood of confusion claim, stressing that, even if the earlier trade marks have acquired a high degree of distinctiveness, that fact cannot compensate for the total lack of similarity between the goods and services at issue.

The interesting part lies in the General Court’s analysis of the claims based on Article 8(5) CTMR. First, the General Court criticises the Board of Appeal for applying a hypothetical premise that the earlier marks enjoyed a reputation of “exceptional strength”, rather than properly analysing their reputation and the existence of a link.

Moreover, based on that hypothetical premise of a reputation of exceptional strength, the General Court disagrees with the Board’s conclusion that none of the three types of risk under Article 8(5) applied. On the contrary, it finds that the “positive qualities evoked by the word element ‘darjeeling’ shared by the signs at issue are capable of being transferred to some of the goods and services covered by the mark applied for and, as a result, of strengthening the power of attraction of that mark“. The General Court holds that this applies to the goods in class 25 as well as some of the services covered in class 35.

The General Court has not defined what amounts to a reputation of an exceptional strength. It will therefore be very interesting to see how the Board of Appeal will define this term and whether it will confirm the existence of such a reputation for DARJEELING.

Delta Lingerie and The Tea Board have known each other for some time as the latter already opposed Delta Lingerie’s Community trade mark for DARJEELING (word) filed in 1997 in class 25 on the basis of international and national registrations for a DARJEELING figurative sign filed in the 80’s as well as the indication of origin for DARJEELING. The Opposition Division rejected the opposition in February 2000 on the basis that the reputation of the earlier marks had not been shown (Article 8(5) CTMR), the registration of the indication of origin had not been proven (Article 8(4) CTMR) and that there was no likelihood of confusion as the goods are “totally different” (Article 8(1)(b) CTMR).

Given the above, Delta Lingerie now ironically owns Community trade marks for the word DARJEELING in two of the relevant classes (25 and 38) which predate The Tea Board’s Community trade marks.

Conclusion

Six months after the General Court granted a larger scope of protection for reputed high fashion brands in its Kenzo decision (see Hogan Lovells’ Fashion & Law 2015), these decisions further increase the scope of protection of marks which have a reputation of exceptional strength, whatever that may mean.

Judgments of 2 October 2015 in cases T-624/13T-625/13T-626/13 and T-627/13 The Tea Board vs OHIM