C-561/11 Fédération Cynologique Internationale v Federación Canina Internacional de Perros de Pura Raza (February 2013)

In this case, the CJEU confirmed that a Community Trade Mark (CTM) proprietor is able to bring infringement proceedings against a proprietor of a later registered CTM, without the need for the later mark to have been declared invalid beforehand.

The relevant sections of the CTM Regulations do not make a distinction on the basis of whether the third party is the proprietor of a registered CTM or not, therefore the CTM proprietor has an exclusive right to prevent “any third party” from using a sign liable to infringe its mark (emphasis added). The CJEU stressed that the exclusive rights afforded to a CTM proprietor are designed to protect the specific interests of that proprietor. If the proprietor were required to wait for the later mark to be declared invalid before preventing its use, the protection accorded to their CTM registration would be “significantly weakened.”

This is different from the position in the UK. Section 11(1) of the UK Trade Marks Act 1994 explicitly states that “A registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered”.

Case T 437/11 and Case T 448/11 Golden Balls Ltd v OHIM – Intra-Presse (September 2013)

This case from the General Court considers the role of conceptual similarity in conflicts between trade marks, particularly where the two trade marks consist of words from different European languages.

In 2007, Golden Balls Ltd filed two CTM applications for the word mark GOLDEN BALLS. Intra-Presse opposed the applications under the provisions of Article 8(1)(b) and Article 8(5) CTMR, on the basis of their earlier CTM registration for the word mark BALLON D’OR. BALLON D’OR translates from French to English as “ball of gold” or “golden ball”. The Opposition Division rejected both oppositions in their entirety, however, the Board of Appeal partially upheld Intra- Presse’s appeals.

After finding that the marks GOLDEN BALLS and BALLON D’OR are visually and phonetically different, the General Court considered the Board of Appeal’s assessment that the signs at issue are conceptually identical or, at the least, extremely similar. The General Court held that, whilst the marks call to mind the same idea, overall the marks have, at most, a weak, or even very weak, degree of conceptual similarity.

The General Court stressed the importance of considering the two different languages which the words originate from. Whilst a linguistic difference of this kind cannot automatically exclude the existence of conceptual similarity, it can potentially prevent an immediate conceptual comparison on the part of the average consumer, in so far as they are required to make a translation. Whether or not immediate conceptual comparison is possible will depend on a number of factors, including the linguistic knowledge of the relevant public, the degree of relationship between the languages concerned, and the actual words used.

T-417/12 SFC Jardibric v OHIM – Aqua Center Europa SA (October 2013)

This case concerns the limitation in consequence of acquiescence (Article 54 of the CTM Regulations).

In 1999, SFC Jardibric filed a CTM application for a figurative mark consisting of the words AQUA FLOW, surrounded by a black background. The application proceeded to registration in March 2001. In May 2009, Aqua Center Europa SA filed an application for a declaration of partial invalidity. This was based on an earlier Spanish national registration for a figurative mark consisting of the words VAQUA FLOW.

SFC Jardibric argued that Article 54(2) applied in this case. This states: “where the proprietor of an earlier national trade mark has acquiesced, for a period of five successive years, in the use of a later Community trade mark in the Member State in which the earlier trade mark is protected while being aware of such use, he is no longer entitled to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark”.

SFC Jardibric argued the starting point of the period of limitation in consequence of acquiescence began from the registration of the contested CTM. However, the General Court held that this was incorrect. In accordance with previous case law, the period of limitation in consequence of acquiescence starts to run from the time when the proprietor of the earlier trade mark is made aware of the use of the later Community trade mark.

Secondly, SFC Jardibric tried to rely on a previous commercial relationship with Aqua Center to prove acquiescence. Aqua Center had, for example, purchased goods sold under SFC Jardibric’s French trade mark registration for AQUA FLOW for several years with a view to marketing them in Spain. However, the General Court found that this did not prove that Aqua Center was aware of the CTM registration for AQUA FLOW specifically. It also did not prove that Aqua Center acquiesced to use of that CTM registration in Spain.

This case highlights that there is a fairly high burden of proof on the proprietor of the later mark when trying to rely on the limitation in consequence of acquiescence. Importantly, the proprietor must ensure that the evidence provided is from the relevant time frame, and also specific to the relevant territory. A finding that Article 54 applies will not be made on assumptions based on a history between the two parties.

C-383/12 Environmental Manufacturing v OHIM – Société Elmar Wolf (November 2013)

In this decision of 14 November 2013, the CJEU offered some further guidance on the requirements for showing detriment to distinctive character under Article 8(5) of the CTM Regulations. The decision clarifies the requirements set out in the earlier decision in Intel, i.e. that in order to show detriment to the distinctive character of a mark, it must be shown that there is evidence of a change in the economic behaviour of the average consumer as a result of the use of the later mark, or there is a serious likelihood that such a change will occur in the future.

In this recent decision, the CJEU held that this is an objective condition and therefore requires more than subjective evidence. The mere fact that consumers note the presence of a new mark similar to an earlier mark is not sufficient in itself to establish the existence of a detriment to the distinctive character of the earlier mark.

You do not need to show actual detriment, but can instead show that there is a serious risk of detriment, allowing the use of logical deductions. Nevertheless, such deductions must not be the result of mere suppositions, but instead must be founded on an analysis of the probabilities, taking into account the normal practice in the relevant commercial sector as well as all the circumstances of the particular case.

The judgement does not offer specific guidance on the type of objective evidence which will satisfy the Intel requirements, however, it suggests that there is a fairly high standard of proof. It seems that it will be insufficient simply to argue that use of the later mark will undermine the earlier mark’s ability to identify the goods for which it is registered as coming from the proprietor of that mark.