C-421/13 Apple Inc. v Deutsches Patent- und Markenamt (July 2014)

In November 2010, Apple registered the following 3D trade mark in the US in class 35 (retail services), described as “the distinctive design and layout of a retail store”.

Apple then filed an international application on the basis of the US registration and had varied success in different territories. In particular, the German designation was refused and, on appeal, the German court referred a number of questions to the CJEU.

The CJEU held that a representation which depicts the layout of a retail store by means of an integral collection of lines, curves and shapes, may constitute a trade mark provided that it is capable of distinguishing the products or services of one undertaking from those of another. Consequently, the layout of a retail outlet could potentially indicate origin, particularly if it departs significantly from the norms or customs of the economic sector.

It was found that there was no relevance as to whether the design contains an indication as to the size and proportions of the retail store it depicts. Provided none of the grounds for refusing registration applies, a sign depicting the layout of a store of a goods manufacturer may legitimately be registered for services as well as goods, where those services do not form an integral part of the offer for sale of those goods.

Dalsouple Société Saumuroise Du Caoutchouc v Dalsouple Direct Ltd & Another [2014] EWHC 3963 (Ch)

Dalsouple UK were the UK distributor of rubber flooring products manufactured by Dalsouple France. In 1998, Dalsouple UK obtained a UK registration for the mark DALSOUPLE. Dalsouple France subsequently attempted to register DALSOUPLE in the UK in 2011. Dalsouple UK opposed this application on the basis of its earlier registration which, in response, Dalsouple France applied to invalidate on the basis of bad faith, arguing that Dalsouple UK was its agent at the time of filing of the UK registration and had acted without their knowledge or consent.

The Hearing Officer, noting that any consent provided did not need to be in writing, found that Dalsouple France had in fact consented to the registration of the mark in the UK by Dalsouple UK. Accordingly, the application for invalidity failed.

An appeal was filed before the High Court, where the key issue was the consideration of ‘consent’. It was held that ‘consent’ had to be interpreted in the same way as ‘consent’ in the context of exhaustion of trade mark rights. Consequently, the test in Zino Davidoff SA applied in this instance, namely that consent has to be expressed in an unequivocal manner, whether or not in writing. Whether an express statement of consent has been made must be determined as a matter of fact in accordance with normal English rules of procedure governing burden and standard of proof.

Consequently, based on the Hearing Officer’s finding of fact, it was held that there was an express oral statement of consent and thus an unequivocal demonstration of an intention to renounce Dalsouple France’s right to prevent Dalsouple UK registering the trade mark in the UK.

Joined Cases C 581/13 P and C 582/13 P Intra-Presse SAS v OHIM (November 2014)

This was an appeal to the CJEU on a number of grounds.

Firstly, the CJEU upheld the reasoning of the General Court in finding that there was no likelihood of confusion between the marks GOLDEN BALLS and BALLON D’OR. In particular, the General Court had held that the marks were visually and phonetically different and that there was, at most, only a weak, or even very weak, degree of conceptual similarity. The CJEU rejected this ground of appeal on the ground that it was in part unfounded and in part manifestly admissible.

Nevertheless, the CJEU held that the General Court was wrong in dismissing the Article 8(5) CTMR reputation ground of the opposition by simply referring to the above findings in the context of likelihood of confusion and concluding that, consequently, ‘the signs at issue lacked the requisite similarity for the purposes of applying Article 8(5)’.

In particular, the CJEU emphasised that the Court had consistently held that the degree of similarity required under the likelihood of confusion and the reputation grounds is different. The level of similarity under Article 8(5) reputation may be of a lower degree than that under the likelihood of confusion ground, provided it is sufficient for the relevant section of the public to make a connection between those marks, namely to establish a link between them.

Consequently, the Article 8(5) ground is only manifestly inapplicable where the General Court has ruled out any similarity between the marks. If there is some similarity, even faint, between the marks, then the General Court must carry out an overall assessment to determine whether a link would be made between them by the relevant public, taking into account other factors such as the reputation or recognition enjoyed by the earlier mark.

In this case, the General Court had found that there was a low degree of conceptual similarity between the marks and so did not rule out all possibility that the marks were similar. As a result, the General Court was wrong to dismiss the application of Article 8(5) without first carrying out an overall assessment of the marks to determine whether, despite the low level of similarity between them, the presence of other relevant factors meant that the relevant public would make a link between them.

The case was remitted to OHIM, which must now reassess whether Article 8(5) applied.