Burlington Fashion GmbH filed EU trade mark applications to register the word mark BURLINGTON and the above “Burlington” figurative marks in classes 3, 14, 18 and 25.
The applications were opposed by Tulliallan Burlington Ltd, the owner of the Burlington Arcade shopping arcade in central London. The oppositions were based on its earlier UK trade mark registration for the word BURLINGTON in classes 35 and 36 and UK/EU trade mark registrations for “Burlington” figurative marks in classes 35, 36 and 41 under Articles 8(1)(b), 8(4) and 8(5).
The class 35 specification included “the bringing together for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase those goods from a range of general merchandise retail stores”.
The Opposition Division upheld the oppositions for the goods in classes 3, 14 and 18. Burlington Fashion filed a notice of appeal.
The Board of Appeal annulled the Opposition Division’s decision. It found that the reputation of the earlier marks had not been proven for the retail services in class 35. It also found that Tulliallan Burlington had not demonstrated the prerequisites for establishing misrepresentation and damage. Finally, it found that the goods and services at issue were dissimilar and that there was no likelihood of confusion.
The General Court Decision
Tulliallan Burlington appealed further to the General Court who dismissed the appeal.
- Infringement of Article 8(5) (taking unfair advantage of the distinctive character or the repute of earlier trade marks with a reputation). The Court disagreed with the Board of Appeal’s “strict” interpretation of the concept of retail trade and overruled its conclusion that the reputation of the applicant’s earlier trade marks had not been proven for retail services in class 35. However, the Court still held that Tulliallan Burlington had failed to submit consistent evidence that the use of the marks applied for took unfair advantage of the distinctive character or the repute of the earlier trade marks.
- Infringement of Article 8(4) (earlier unregistered rights – passing off). The Court found that the Board of Appeal was entitled to find that Tulliallan Burlington had not demonstrated the prerequisites for an action for passing off.
- Infringement of Article 8(1)(b) (similar marks and/or similar goods and services). The Court held that no similarity or complementarity could be established between the services covered by the earlier trade marks and the goods covered by the mark applied for. The absence of any precise statement of the goods which may be sold in the various shops in a shopping arcade such as Burlington Arcade precludes any association between those shops and the goods of the marks applied for.
Case Ref: T-120/16 T-121/16 and T-122/16