F.M.G. Textiles Srl (FMG) is an Italian company specialising in marine textiles and accessories. On 24 September 1998, its legal predecessor filed an application to register a figurative sign accompanied by the word Bainbridge as a Community Trade Mark. The application was filed for classes 18 (leather, hides, trunks, umbrellas etc.) and 25 (clothing, footwear and headgear) of the Nice Agreement. After the applications publication, Il Ponte Finanziaria SpA (Il Ponte) opposed the registration.
Il Ponte is an Italian manufacturer of leather goods and the proprietor of 11 earlier Italian trade marks in classes 18 and 25. All of these marks contained the word bridge, e.g. The Bridge, Old Bridge, Footbridge and Over The Bridge. Il Ponte alleged that these earlier marks constituted a family or series of marks and that the word Bainbridge infringed this series of marks under Article 8(1)(b) of the Trade Mark Regulation (Regulation 40/94 of 20 December 1993).
Article 8(1)(b) provides that a trade mark may not be registered, on opposition by the proprietor of an earlier trade mark, if the mark is identical or similar to the earlier mark and the goods/services covered by the trade mark are identical or similar such that there is a likelihood of confusion on the part of the public which includes the likelihood of association with the earlier trade mark.
The opposition was successively dismissed by the Opposition Division of OHIM, the Fourth Board of Appeal of OHIM and the Court of First Instance (CFI), inter alia because (i) Il Ponte failed to establish use of all its trade marks; and (ii) the marks could not be classified as marks in a series since no proof was furnished that a sufficient number of them had been used.
Indeed, the CFI found that:
1. Il Ponte had only established that two of the marks had been put to use. Therefore, there was no family of marks? and only the two marks could be taken into account.
2. For a mark to be regarded as being in genuine use, it must be objectively present on the market in a manner that is effective, consistent over time and stable in terms of the configuration of the sign.
3. The Board of Appeal was entitled to reject ?defensive registrations of marks. The taking into account of such registrations is not compatible with the system of protection of the Community Trade Mark intended by EC Regulation 40/94, which requires proof of use as an essential precondition for conferring exclusive rights on the proprietor of the mark.
Il Ponte appealed to the European Court of Justice (ECJ).
The ECJ concluded that the CFI was right in its finding that the defensive registration of trade marks in order to prevent others using the mark is inadmissible in light of the Trade Mark Registration. This is because the effective function of trade mark registrations is to protect marks that will actually be used.
The ECJ also upheld the CFIs finding that only two of Il Pontes earlier marks were in fact in genuine use. This was insufficient to create a series of marks with which the public might associate FMGs mark. Consumers can only be likely to assume that a trade mark containing a common element with a series of marks is associated with that series if a sufficient number of trade marks to form a family or series are in use and the earlier trade marks which are part of that family or series [are] present on the market.