If existing commercial use of a trade mark application shows the applicant’s intention to offer parasitic copies, examples of such use can be valid evidence for the taking advantage of the repute of an earlier trade mark says the General Court (judgment of 11 December 2014, Case T-480/12, Coca Cola v. OHIM / Mitico).

In this case The Coca-Cola Company (“Coca-Cola”) opposed Modern Industrial & Trading Investment Co. Ltd’s (“Mitico”) CTM application:

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filed for, amongst other goods, non-alcoholic beverages based on its reputed earlier marks below covering essentially the same goods.

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Coca-Cola argued that the application took unfair advantage of the reputation of Coca-Cola’s earlier marks (Article 8(5) CTMR). In its decision the General Court agreed with Coca-Cola that for the assessment of whether there is free-riding, Mitico’s actual commercial use of the application was, in fact, relevant. Coca-Cola had submitted screenshots of Mitico’s .com website showing that the application was used in a similar way, get-up and for the same cola goods as Coca-Cola’s earlier reputed marks.

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The General Court rejected OHIM’s and Mitico’s argument that for the assessment under Article 8(5) CTMR only the application must be taken into account.

This means that evidence showing the intent to use a trade mark application for parasitic copies can be used against the registration of that application in opposition proceedings. Actual use material is therefore relevant for the assessment of free-riding (Article 8(5) CTMR) – in contrast to that of likelihood of confusion (Article 8(1)(b) CTMR).

There are a number of other noteworthy points in this decision.

In the contested decision OHIM’s Board of Appeal had considered the marks in dispute to be dissimilar and that therefore one of the preconditions of Article 8(5) CTMR had not been met. After confirming that the similarity of signs is, in fact, one of the preconditions (see also TiMi KINDERJOGHURT, T-140/08 of 14 October 2009, confirmed by the CJEU in C-552/09 P), the General Court clarified that not only were the marks similar, but there was also a link between them.

On the one hand, the fonts and other presentational features of the marks such as the “long tail” led to a certain degree of visual similarity. On the other hand, the Court found that when consumers select goods such as food products or beverages from the shelf directly they are guided more by the overall visual impression of labels or packaging. In such a case the figurative elements of the marks play a more important role than the word elements. This was also the reason why the Court concluded that the marks in dispute were sufficiently similar overall despite the lack of aural and conceptual similarity. The difference between the words “COCA-COLA” and “MASTER” was, for these reasons, found not to be decisive.

Against this background, the General Court annulled the contested appeal decision. The case will now be remitted to the Board of Appeal to examine the remaining conditions of Article 8(5) CTMR which it had not commented on.