(This article was written for the World Trademark Review. The original article was published on March 19, 2012.)
In Not Us Limited v. Spectrum Enterprise General Trading LLC (Opposition No. B1786766), the Opposition Division of OHIM rejected an Application for registration of the Mark U2 for goods in Class 34, including tobacco, on the basis that it would take unfair advantage of the repute and the consistent selling power of the earlier Mark of the rock band U2.
The applicant, Spectrum Enterprise General Trading, applied to register the Mark U2 for “tobacco; smokers’ articles; cigarette cases” in Class 34. The opponent, Not Us Limited, filed opposition under on Article 8(5) of the CTMR, namely rights to an earlier identical Mark that has a reputation in the European Union and that the use of the Mark applied for would take unfair advantage of, be detrimental to, the distinctive character or repute of the earlier Trade Mark.
The opponent filed a substantial amount of evidence to demonstrate that its Mark U2 enjoyed a reputation at the time of filing of the contested Application. The opponent argued that the use of the identical Mark in relation to the goods applied for would lead to a dilution and/or tarnishment of its earlier Mark.
The applicant did not file observations in support of its Application or in reply to the evidence presented on behalf of Not Us Limited.
The Opposition Division summarised the requirements of Article 8(5) in three parts:
- The Marks must be either identical or similar;
- The earlier Mark must have a reputation; and
- Encroachment upon reputation, which occurs when one or more of the following situations arise:
- unfair advantage of the distinctive character or repute of the earlier Mark (i.e. free-riding),
- detriment to the repute of the earlier Mark (i.e. tarnishment), and
- detriment to the distinctive character of the earlier Mark (i.e. dilution).
The Opposition Division accepted that the respective Marks were identical. In relation to the reputation of the earlier Mark, it held that the opponent succeeded in proving that its earlier Mark enjoyed a reputation at the time of filing of the contested Application, and that this was attested by independent and diverse sources. The evidence indicated that the Band U2, its performances and recordings were widely known on an International scale at the date on which the contested Application was filed, and that the reputation stretches over a thirty year period.
In relation to proving the third requirement of Article 8(5), “encroachment upon reputation”, the Opposition Division confirmed that if the opponent is able to establish that there is a future risk, which is more than hypothetical, of the CTM Application taking advantage of or causing damage to the earlier Mark in any one of the three way referred to (i.e. tarnishment, free-riding and/or dilution), it will be enough to bring Article 8(5) of the CTMR into play (Case T-67/04 “Spa-Finders” [2005 ECR II – 1825] at paragraph 40).
With reference to relevant case law, the Opposition Division found that the relevant public could be led to believe that goods bearing the Trade Mark U2 were produced under control or licence of the opponent. Based on the identity between the Marks, the considerable and long standing reputation of the earlier Mark and the overlap of the relevant public, it was likely that by using the Trade Mark U2 the applicant will take unfair advantage of the repute and the consistent selling power of the earlier Trade Mark. Unfair advantage would arise from the introduction of its own Trade Mark upon the public who knows the earlier Mark well and without incurring any great risk or costs of launching a totally unknown Trade Mark on the market.
The Opposition Division also noted that advertisement for tobacco has been banned on television within the EU member States since 1991, and the Tobacco Advertising Directive, which took effect in July 2005, extended the ban to cover other forms of media. Although the enforcement of these laws do not prevent the registration of the Mark in the present case, it would prohibit, on a large scale, its advertising. Accordingly, the unfair advantage that the applicant is seeking to obtain by introducing an identical Trade Mark U2 for tobacco products, on a market on which the advertisement for these products is severely restricted, is even more noticeable.
The Opposition Division therefore considered the opposition to be well-founded under Article 8(5) of the CTMR and rejected the CTM Application.