On the 6 February 2007, the Court of First Instance upheld the decision of the First Board of Appeal of the Office of Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), concerning opposition proceedings between TDK Kabushiki Kaisha and Aktieselskabet Af (21 November 2001).
In this case, the applicant submitted an application for a Community trade mark, 'TDK', for clothing, footwear and headgear, in the OHIM, pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark. The application was opposed by TDK Kabushiki Kaisha ('the Opponent') under Article 8(5) of the regulation, on the basis of the existence of a Community trade mark and 35 earlier national trade marks, registered for 'apparatus for recording transmission or reproduction of sound or images'. The earlier marks were either the word mark TDK, or the word and figurative mark reproduced below:
The Opposition Division upheld the opposition and refused the application. Thereafter the appeal by the applicant was dismissed by the First Board of Appeal of OHIM. The applicant challenged the decision before the Court of First Instance. The applicant argued that the opponent failed to prove distinctive character and reputation of earlier mark, and even in the case of assumption of reputation and distinctive character, the elements of detriment or unfair advantage were not proved. The evidence submitted by the opponent showed that its reputation was recognised by a sizeable proportion of the public, particularly in its role as a manufacturer of certain goods and also as a sponsor of sporting events and concerts featuring pop stars.
The court held that from the material filed, and the investment made by the opponent in promoting its mark by way of sponsorship, it was clear that the mark enjoyed a reputation of significant value founded upon the fact that it is known by a significant part of the public concerned in the European Community. Since activities such as athletics, basketball, football and musical events attract the devotion and loyalty of 'fans', the connection of the opponent's mark with those activities will have attracted a substantial amount of goodwill and reputation. Accordingly, the opponent was entitled to claim broader protection for its mark for the purposes of Article 8(5). The court concluded that the possibility of the applicant using the letters TDK on sports clothing (or footwear or headgear used for sporting activities) manufactured by it could not be overlooked. This in itself was sufficient to amount to an act of taking unfair advantage of the reputation and distinctive character acquired by the opponent, leading to a conclusion by the public that the goods of the applicant were either manufactured by or under license from the opponent. The Court pointed out that it is not necessary to establish actual and present harm to an earlier mark. Rather, prima facie evidence of a future risk of an unfair advantage being taken of the mark, and which is not a hypothetical risk, must be available. Thus the court held that the reputation and the distinctive character of the earlier trade mark was proven with the likelihood of unfair advantage being taken by the applicant. The court dismissed the appeal and ordered the costs to be paid by the applicant.