In October 2004 Pukka applied to register the word mark PUKKA as a Community trade mark (CTM) at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (“OHIM”). The registration in Class 18 was for: “articles made of leather or imitation leather; bags, handbags, holdalls, trunks and travelling bags; luggage; key-cases, wallets, purses; briefcases; belts; carriers (luggage) for suits and for dresses; attaché cases; cheque-book holders; passport holders, credit-card holders; umbrellas”.
Their application to register was opposed by a Spanish individual (Senor Azpiroz Arruti) who owned a Spanish figurative mark (with a filing date of May 1990) registered in Class 18 for: leather and imitations of leather, and goods made of these materials not included in other Classes; animal skins; trunks and suitcases; umbrellas, parasols and walking sticks; whips and saddlery. The mark is reproduced below.
Snr Azpiroz Arruti also owned a CTM filed on the 1st April 1996 (the opening day of OHIM, in fact) in Class 25 for clothing, footwear and headgear, a registration in Class 28 for sporting and gymnastic articles and other things in Class 39. A reproduction of the mark is set out below.
As is often the case, the hearing of Snr Azpiroz Arruti’s opposition to Pukka’s application took almost three years to be decided. However, the Opposition Division of OHIM upheld Snr Azpiroz Arruti’s opposition, but only on the basis of the earlier CTM. The only goods which escaped the opposition were trunks and umbrellas.
Unsurprisingly, Pukka appealed the decision to one of the Boards of Appeal of OHIM but were unsuccessful. The Board of Appeal found that the application was correctly opposed on the basis that the earlier CTM had been genuinely used for clothing and belts in Class 25. As a result of that, when comparing the goods and the marks there was a high degree of similarity which was likely to cause confusion within the EU. Pukka appealed again to the EU General Court.
It’s purely logical, Captain!
In order to understand how the General Court upheld the Board of Appeal’s decision, it is important to bear in mind that there is a distinction to be made between seeking to obtain a registration for a trade mark, and actually infringing a trade mark registration itself. In the former case, the relevant tribunal can, based on the evidence put before it (which is usually very little), make up its own mind whether it considers your average consumer in Europe is going to be confused. In relation to infringement itself, of course, this is a far more serious allegation and so the relevant tribunal requires there to be far more evidence to establish that there has (usually) been actual confusion, particularly where goods have been sold for some years. But where goods have not been sold in one jurisdiction, but have been sold in another, and there is, perhaps, press speculation that they are about to start selling in another jurisdiction, then the earlier mark owner may be able to obtain injunctive relief, perhaps emboldened by any decision (such as in this case), in respect of an opposition to a trade mark application.
The approach to assessing whether to allow a mark to be registered which is being opposed, has taken on something of a formulaic approach, albeit with the subjectivity of the tribunal’s own views thrown in. What is meant by this will become much clearer as we look at the approach OHIM takes in assessing whether to allow registration.
First, the opponent (and thus the earlier mark owner) will usually be required to establish that the mark has been used in relation to all the goods for which it is registered. In this instance, all Snr Azpiroz Arruti was able to show was that the mark had been used in respect of “clothing” and “belts” in Class 25. Those of you who have a quick look above at the CTM registration Snr Azpiroz Arruti had, will note that the word “belts” is absent. It is arguably a questionable practice to put down the headings for various classes (and thus cover all goods within the class), and there is pending before the Court of Justice of the European Union a test case as to whether this is to be continued. However until then, even though “belts” has not been mentioned, they are, nevertheless, covered. And interestingly enough, within Class 25 there are 7 types of belts ranging from belts to hold up your trousers, money belts, and, for the ladies, suspender belts (or maybe that should be for the gentlemen!).
Although the logic of assessment would say: assess the marks; assess the goods; is there a likelihood of confusion, because of the way that the lawyers for Pukka pleaded the matter (and/or it was dealt with in the lower tribunals) the assessment was for the goods first, followed by the marks and then the question of whether there was a likelihood of confusion on the part of the public.
So although one might not like the logic, we will follow how the EU General Court considered the matter.
Are the goods similar?
At first blush, you may be forgiven for considering that belts to hold up your trousers and/or clothes have absolutely nothing to do with bags, handbags, holdalls, travelling bags, luggage etc. This is especially the case when the assessment considers the users, the uses, physical nature of the goods, and how the goods get to market.
However, the General Court, first identified that the “average consumer” (and so the “legal person” that has to be confused) was the reasonably well informed and reasonably observant and circumspect EU consumer, who will pay no higher than average attention to the goods being purchased which are of every day use, since they do not have a serious impact on health, budget, or the life of the EU consumer. Next they found that the belts in Class 18 were highly similar to the belts in Class 25, even though one related to luggage and the other related to trousers! A small victory for Pukka was that the Board of Appeal had originally found that clothing in Class 25 did not resemble anything (other than belts) in Class 18. The General Court therefore followed their reasoning and so, quite literally, only belts in Class 25 were the problem for Pukka. At this stage you may well be thinking Pukka are on to a winner here!
How, therefore, you ask, can belts to hold your trousers up possibly be considered a problem in respect of luggage and travel bags in Class 18? The General Court follow Dr Spock’s impeccable logic!
First, generally both types of goods are manufactured of leather and used by consumers as accessories. Second, (based on no specific evidence but rather points made by OHIM to the relevant tribunals) that numerous major brand companies in the clothing sector produce classic bags, handbags, luggage, travel bags etc (think Louis Vuitton) that also sells clothes and belts for holding trousers up. Accordingly, the average EU consumer may therefore be “confronted” at the same time and in the same place with the different types of belts as well as luggage and travel bags. Given that the consumer may well take a “coordinated approach” to their clothing as well as luggage accessories, the court concluded that the degree of similarity could not be regarded as “slight”.
Pukka tried to argue that the Board of Appeal had failed to take into account sub-categories within luggage, which could not possibly be similar to belts. But the General Court rightly pointed out that the trade mark applied for had the specification as it was written, and the sub-categories did not appear. Had they done so, then of course it would have been possible to look at each individual item to assess the degree of similarity. It is difficult, however, to see how, given the logic of major brands providing both clothing, and so belts, and various forms of luggage, that this would have worked in any event.
Please tell me the marks are not similar!
Unfortunately, the General Court concluded that they were!
The lesson to be learned here is the approach that the court takes when assessing similarity of the marks. In essence, there are three aspects the court looks at: the visual similarity; the aural similarity and the conceptual similarity.
The marks themselves must be looked at as a whole. Where, as in this case, there is a composite mark that comprises both a logo feature as well as a word mark, it is not permissible simply to look at the word marks and compare “PUKAS” with “PUKKA”. However, some features may be regarded as more dominant than others and so the relevant weighting to be given to each aspect can legitimately be taken into consideration.
What the court said was that in terms of visual similarity there was an average degree of similarity on the basis that a composite mark did at least include the word element. Interestingly, the court, when it was pointed out to them that the logo element was 5 times as large as the word element, said that size did not matter! Really?!!
In terms of the aural similarity, the court upheld the finding that the marks were phonetically almost identical and would be pronounced in a similar way, so therefore there was a high degree of similarity. In terms of conceptual similarity, it was accepted that there was no similarity at all.
Taking all that into account, the court concluded that there was a likelihood of confusion on behalf of the average European consumer between the marks, and so only trunks and umbrellas would be allowed, and the other goods could not be registered.
Lessons to be learned
Unlike Corporal Jones in Dad’s Army shouting “don’t panic, don’t panic!” while himself panicking, I doubt that Pukka had the same feelings. Most likely they will be deeply disappointed, if not a little frustrated at the outcome. Perhaps fingers will be pointed at those who did the job collecting the necessary evidence and arguing the case that it wasn’t enough. And herein lies the first lesson. If the mark is fundamental to the business, then seeking registration is important. Which means that putting the best evidence together in the face of an opposition so that the outcome is that the registration ultimately is granted, should have a high priority. All too often, those responsible internally provide the lawyers with a few bits and pieces, an occasional stray catalogue, a couple of invoices or something of the same nature, without wishing to spend lots of money getting the mark onto the register or avoiding an opposition. That is a mistake. The evidence that you start with is the evidence that you will end up with and unless you don’t really care about the mark, then listening to your advisor as to what truly is needed to put forward the “best evidence” is a worthwhile exercise.
As stated above there is a difference between getting the mark onto the register and actually infringing. Pukka will no doubt be disappointed that what the decision does is remove from their control the ability to stop others using “PUKKA” in respect of articles of luggage. Now, they will have to rely on the common law right of an action in passing off in order to “defend their patch”. That is a more difficult approach and frequently a more costly one, especially if surveys are to be undertaken.
But I doubt that panic is setting in knowing that Snr Azpiroz Arruti has a CTM, which will enable him to bring proceedings for infringement against Pukka. I am not sure why Snr Azpiroz Arruti chose to defend this matter all the way up to the EU General Court. After all, the business that uses his trade marks is a specialist surfing business. Why he felt an English company using a Hindi derived word in respect of goods he neither sells nor distributes, is a matter for him. It seems unlikely, however, that he would choose to bring proceedings in a court of law (particularly an English one). Although the test both for opposing and infringement is the same, in reality a court will look to see whether there has been any actual confusion, particularly if the parties have been trading for some time.
Another useful lesson is the visual, aural and conceptual “rough and ready” approach taken, which thus enables businesses to assess for themselves whether the mark chosen to be applied for is going to run into problems when faced with an opposition. A quick search of the register at OHIM will flush out any potential problems with CTMs, although it may only be at a later stage after the application has been advertised for opposition, that a national trade mark right owner will come out of the wood work. The assessment should be conducted again to see whether to bother continuing to apply in the face of the opposition, or whether to abandon the application and thus save on costs.
But if, as pointed out above, a considerable amount of time and effort and expense has been expended in relation to the brand, and there is goodwill attached to the brand which has considerable value, then don’t simply skimp on doing a thorough job at OHIM and pay your chosen trade mark agent or lawyers to do the job properly. In the overall scheme of things, it probably isn’t a huge amount of money, especially when spread over a number of months or years. It may not be successful, but at least then the company knows that it did its best and recriminations of “if only….” will never be made.
The only other lesson to be learned is that, in the end, judges are humans too, as well as being part of the group of “average European Union consumer”. The logic applied in this particular case, while somewhat tortuous, does at least have some basis in the likes of major brands such as Louis Vuitton, Gucci, and Dior, who all produce clothes and luggage. I suppose it was just bad luck that Pukka happened to run across one or more of the judges (or their spouses) who knows far too much about designer labels and luggage!
But that Louis Vuitton luggage….now that really is pukka luggage!