“PERFECT STRANGERS” DEEP PURPLE JUDGMENT OF THE EUROPEAN GENERAL COURT In the previous days, during a routine trademark monitoring session, we caught sight of a DEEP PURPLE trademark application (2020/83814) published recently in Turkey. When we saw the application filed by Ian Paice, Ian Gillan and Roger Glover, current members of the band, the dispute that occurred in Europe in 2018 for the registration of the name of this musical band as a trademark between on one side Ian Paice, drummer, one of the founding members of this legendary British musical band, and on the other side Richard Hugh Blackmore, ex-guitarist, again one of the founding members thereof, came back to our mind. That is why we wished to make a flashback and report to you the related judgment of the Court of Justice of the European Union (The General Court). Rumor has it that in those days, the members of this musical band, founded in 1968, were rehearsing in the basement of house of the hearing-impaired grandmother of their guitarist Blackmore. And the grandmother, a fan of Peter De Rose, kept asking her grandson when they were going to play the song named “Deep Purple” which was very popular in 1930s. This put an end to the ongoing discussions on “the name of their musical band”. Blackmore suggested “Deep Purple” as the name of their band, and that was it. Of course, we don’t know whether it was decided by majority of votes. However, as the time went by, some joined and some quitted the band… In the meantime, Blackmore also quitted the band first in 1975 (and went to found Rainbow in the meantime), and secondly left the band for good in 1993. Other existing members and Ian Paice are still sustaining the legend of this marvellous band and whatever we say about their lives and music, it will in any case fall short, but now we must get straight to the point. Let us now explain the events paving the way for the judgment to be reported. If you wish to take a glance at it beforehand, you may display the judgment to be reported throughout the article from the following link. http://curia.europa.eu/juris/document/document.jsf?text=&docid=206484&pageIndex =0&doclang=en&mode=lst&dir=&occ=first&part=1&cid=13374453 The course of events on the background of the judgment of the General Court was as follows: On 26 April 2013, Richard Hugh Blackmore filed an application to the European Union Intellectual Property Office (EUIPO) for registration of the word mark “DEEP PURPLE”. The application covered the following goods and services: Class 9: Audio/video recordings of musical performances; phonograph records; musical recordings, including downloadable and physical media versions; downloadable music files; digital music (downloadable) provided from the internet; digital music (downloadable) provided from MP3 internet websites; mouse mats and mouse pads; sound recordings; video recordings; recorded media, computer hardware and firmware; downloadable electronic publications; digital music; mouse mats; mobile phone accessories; sunglasses; audio recordings featuring music; video recordings featuring music; audio tapes featuring music; DVDs featuring music; compact discs featuring music; digital music downloadable from the internet; downloadable MP3 files, MP3 recordings, webcasts and podcasts featuring music; downloadable video recordings featuring music; phonograph records featuring music; pre-recorded video cassettes featuring music; cinematographic films; animated cartoons; film strips; movies; magnetic recordings; optical recordings; electronic books and publications; computer games; software for interactive games for computer, mobile phones and handheld devices; digital recordings; media bearing, or for recording, sound and/or video and/or data and/or information; digital games, mobile phone games; DVD games; radio, television, cable and satellite recordings; sound, video, data, interactive software and multimedia recordings, including recordings in electronic, magnetic or optical form; publications in electronic, magnetic or optical form; pre-recorded digital sound and video storage media; compact discs; compact disc ROMs; mini-discs; digital audio tapes, cassettes, computer chips and discs; digital video tapes, cassettes, computer chips and discs; computer software and computer programs; compact discs, records, pre-recorded audio and video tapes; computer programs; computer games; pre-recorded compact discs and records. Class 25: Clothing, footwear, headgear; pique shirts; polo shirts; rugby shirts; shirts; sport shirts; sweat shirts; t-shirts; baseball caps; golf caps; knitted caps; shower caps; men’s and women’s jackets, coats, trousers; rain jackets; rainproof jackets; sweat jackets; track jackets; wind resistant jackets. Class 41: Entertainment services; musical performances by a musical group; publishing services; entertainment in the nature of visual and audio performances, namely, musical band, rock group; entertainment, namely, live performances by groups; entertainment services, namely, providing non-downloadable pre-recorded music, information in the field of music, and commentary and articles about music, all on-line via a global computer network; entertainment, namely, live music concerts; provision of information relating to music; entertainment services in the nature of live performances; entertainment, namely, live concerts; presentation of live show performances; provision of information relating to live entertainment; provision of entertainment by means of radio, television, satellite, cable, telephone, the worldwide web and the internet; rental of sound recordings and of pre-recorded shows, films, radio and television performances; television entertainment; sound recording, film and video production and distribution services; digital music (not downloadable) provided from the internet and/or websites on the internet; providing on-line electronic publications (not downloadable); publication of books, magazines and other texts online; provision of entertainment, both interactive and non-interactive; production and distribution services in the field of recordings of sound, video, data, interactive software and multimedia, in electronic, magnetic, optical or other form; publishing services, including provision of on-line electronic publications; music publishing services; information provided on-line from a computer database or from the internet in relation to entertainment services; studio facilities, music publishing services, presentation of live musical performances; production of musicals, concerts and films; production of music; music composition services Upon publishing of this application for registration, drummer Ian Paice, one of the founding members of the band still continuing to use the name “DEEP PURPLE”, filed an opposition to EUIPO on the ground of “his rights based on the earlier nonregistered mark”. And the non-registered mark rights relied upon in the opposition were related to the following goods and services: – audio/visual recordings of musical performances, musical recordings, musical digital downloads, DVDs, CDs, cassette tapes, video tapes, programmes; – entertainment services, musical performances by a musical group, entertainment by visual audio performances; live musical performances, entertainment transmitted by both analogue and digital formats; – key rings, playing cards; – posters, ticket stubs, sales brochures, books, cards, photographs, stickers, books, fliers, car stickers, post cards, bumper stickers, books, cards, photographs, stickers, books, fliers, car stickers; – guitar plectrums, drum sticks; – buttons, t-shirts, cloth patches, badges, stick pins, caps, silk tapestries, cloth patches, badges, leather arm bands, head bandanas; and – spinning tops, trading cards, pin ball games, playing cards. Decision of the Opposition Division of EUIPO: The opposition filed in respect of all goods and services covered by the application for registration was fundamentally based on the argument of “having the right to prevent use of a non-registered mark by third parties through imitation” and on the “Passing Off” tortious act dealt with in connection therewith in the United Kingdom. Thereupon, EUIPO requested the intervener to substantiate his alleged earlier rights on which his opposition was based, and set a time limit until 2 February 2014 for that purpose. On 9 September 2013, the intervener submitted documents describing the history of the band Deep Purple and providing evidence thereof, but did not provide any other documents by the time limit set as above. However, after the time limit, the intervener filed some other detailed observations and additional evidences, but the Opposition Division did not take into account the evidences submitted by the intervener on the ground that they had been submitted after the time limit set thereinfor. At the end, the Opposition Division upheld the opposition in part, and thus refused registration of the mark applied for in respect of some of the goods in Class 9 and all of the services in Class 41. The goods in Class 9 and Class 25 remaining in the scope of application after the partial refusal decision are as listed below: – mouse mats and mouse pads; mobile phone accessories; sunglasses; computer hardware; computer chips and discs, interactive software, as well as computer firmware; computer games; software for interactive games for computer, mobile phones and handheld devices; digital games, mobile phone games; DVD games; computer software and computer programs. Clothing, footwear, headgear; pique shirts; polo shirts; rugby shirts; shirts; sport shirts; sweat shirts; t-shirts; baseball caps; golf caps; knitted caps; shower caps; men’s and women’s jackets, coats, trousers; rain jackets; rainproof jackets; sweat jackets; track jackets; wind resistant jackets. Thereupon, Ian Paice filed a notice of appeal against the decision. Decision of the Board of Appeal of EUIPO: The Fifth Board of Appeal of EUIPO dismissed the intervener’s appeal in respect of the following goods in Class 9: “computer hardware; computer chips and discs, interactive software, as well as computer firmware; computer games; software for interactive games for computer, mobile phones and handheld devices; digital games, mobile phone games; DVD games; computer software and computer programs” However, it allowed the appeal in respect of the following goods: – Class 9: “mouse mats and mouse pads; sunglasses; mobile phone accessories” – Class 25: “Clothing, footwear, headgear; pique shirts; polo shirts; rugby shirts; shirts; sport shirts; sweat shirts; t-shirts; baseball caps; golf caps; knitted caps; shower caps; men’s and women’s jackets, coats, trousers; rain jackets; rainproof jackets; sweat jackets; track jackets; wind resistant jackets.” In taking this decision, the Board of Appeal has first of all taken into account the “Passing Off” tortious act adopted in the United Kingdom and referred to hereinabove. In the course of taking this tortious act into account during the appeal process, the Board of Appeal took into consideration the findings that the applicant Blackmore had resigned from the band in 1993, and thereafter, the intervener Ian Paice and the current and succeeding members of the band had continued their musical activities under the name Deep Purple which had then accrued significant goodwill, thereby arousing interest in consumers with the goodwill of the band. Thus, considering all of these factors and causes, it was possible to prevent registration of the application only partially under “Passing Off”. The Board of Appeal: – First, found that the submitted evidence showed that “clothing merchandise” generated a significant revenue stream for the band members over the relevant period and that merchandising was an essential part of the business of a rock band on tour. It decided, therefore, that if the subject trademark was registered and used for the goods in Class 25, damage to the goodwill of the band was plausibly foreseeable by virtue of diversion of trade, and hence, the sale of the goods in Class 24 could be prevented by “Passing Off”. In addition, given that it was common knowledge that most items in Class 9 were commonly decorated with commercial or personal imagery, and given the goodwill attaching to the name Deep Purpole in merchandising of these goods, and the role played by the merchandising items in terms of performance of the function of a badge of declaration of allegiance or as memento for fans, the Board of Appeal came to the conclusion that there would be misrepresentation and damage to the goodwill if the applicant was allowed to market “mouse mats and mouse pads; mobile phone accessories” under the name in dispute. Likewise, as regards “sunglasses”, the Board of Appeal found that they were also accessorised with closing so as also to be considered at risk of misrepresentation. – Secondly, as regards “computer hardware; computer chips and discs, interactive software, as well as computer firmware; computer games; software for interactive games for computer, mobile phones and handheld devices; digital games, mobile phone games; DVD games; computer software and computer programs” in Class 9, the Board of Appeal found that no evidence had been submitted that the band had been involved in trading those items. It also added that those items fell into a category of goods that were not associated with music business merchandising in general and the band in particular. In summary, the Board of Appeal did not honor the opposition for these goods mentioned in second part hereinabove. In addition, the Board adjudicated on the admissibility of the late evidence, namely that submitted by the intervener after the time limit set thereinfor. Judgment of the General Court: The applicant Blackmore applied to the General Court and requested cancellation of the decision of the Board of Appeal. Blackmore’s pleas in law were as listed below: 1. The Board of Appeal was wrong to admit the evidence filed by the intervener after the deadline set forth thereinfor. 2. The goodwill in the name of Deep Purple band could not be proven to the requisite legal standard. 3. The intervener could not adduce sufficient evidence to establish his entitlement to a share in any goodwill. 4. The decision is erroneous also in terms of the goods at issue covered by the partial refusal. First of all, it should be reminded that pursuant to Article 8(4) of the EU Trademark Regulation, the proprietor of a non-registered trademark may oppose the registration of an EU mark only if that non-registered trademark satisfies the following four conditions. On top of that, these conditions are cumulative, and even if one of them is not satisfied, the opposition fails: i- The non-registered trademark must be used in the course of trade. ii- The goodwill of trademark must be of more than mere local significance. iii- The rights to that non-registered mark must have been acquired prior to the date of application for registration of EU trademark, pursuant to the law of the Member State in which the mark was used. iv- The trademark must confer on its proprietor the right to prohibit the use of a subsequent trademark. In the present pending case, in accordance with the rules on “Passing Off” under the United Kingdom common law, the intervener must establish that the following three conditions are satisfied in regard to use of non-registered trademark: a. It should be demonstrated that the goodwill attached to the goods or services offered by the intervener was associated with DEEP PURPLE band in the mind of the relevant public and consumers. And that goodwill must have been acquired as of the date on which the subject goods and services were started to be offered. However, according to Article 8(4) of the Regulation, this date is the date on which the application for an EU trademark was filed, since the intervener must have acquired these rights over its non-registered national mark before the date of filing of the subject application. b. It should also be demonstrated that the same or complementary goods and services have been offered in the United Kingdom under the sign Deep Purple, and that this offering has led the relevant public or consumers to attribute the commercial origin of those goods and services to the intervener. c. Thirdly, it should also be demonstrated that the intervener is likely to suffer commercial damages therefrom. The intervener’s (claimant) pleas in law listed in four articles hereinabove have been examined by the General Court. The General Court has started to assess the pleas in law from the plea no. 2, and we are also going to follow the same order in reporting them herein: The plea in law that the goodwill could not be proven to the requisite legal standard (2): This plea in law is divided into two parts. First part is related to the argument that it was wrong to conclude that goodwill had been sufficiently proven by the evidence submitted, and second part of the plea is related to the argument that it was wrong to come to this conclusion by admitting the additionay evidence delivered after the time limit set and granted by the Opposition Division. In order to prove the argument of invalidity of evidence, the following arguments are put forward by the claimant: – A selection of press articles published prior to the date of application for registration of the trademark has been submitted as evidence, and they refer only to concerts which post-date that application. Since the “law on imitation of earlier nonregistered mark” requires the intervener to prove that goodwill existed prior to the date of application for registration of the subject market, the evidence which only demonstrates trade after that application date is of little, if any, probative value. – Another document submitted as evidence is a table with data on ticket sales for various concerts given by the band Deep Purple between 2003 and 2013 years. However, that table is not supported by any signed statement, nor by sales receipts. Moreover, the vast majority of ticket sales detailed in that annex relate to concerts which took place outside the United Kingdom, which is not relevant for the purposes of proof of goodwill. – As regards other evidences containing 19 Deep Purple album covers from 1968 to 2013, it is argued that these documents do not constitute evidence or proof of any trading activity in the United Kingdom, in that they are supported neither by an indication of the volumes sold therein, nor by sales receipts. EUIPO and the defendant (i.e. intervener) dispute those arguments. In relation therewith, it must be pointed out that as shown by some previous court decisions focused on the same issues, the courts in the United Kingdom are very unwilling to assume that a business can have customers, but no goodwill. In addition, goodwill is normally proved by evidence of, inter alia, trading activities, advertising and consumers’ accounts. Genuine trading activities, which result in acquiring reputation and gaining customers, are usually sufficient to establish goodwill. Furthermore, it must be borne in mind that the Board of Appeal is required to carry out an overall assessment of all the evidence placed before EUIPO. Each of the pieces of evidence, taken individually, may be insufficient to constitute proof of the accuracy of the facts, but nevertheless it may be necessary to assess the accumulation of evidence as a whole for establishment of the relevant facts. If the arguments are assessed in the light of the foregoing considerations: – First, it must be found that, regardless of their dates of publication, the press articles published in 2013 prove that the band Deep Purple had an active and continuous presence in the United Kingdom during the period preceding the date of application for registration of the mark applied for. This means to say that the arguments that those articles are only evidence of the band’s return after a prolonged absence and that they are not supported by the circulation figures of the publications in question are unconvincing and do not make these evidences invalid; what’s more, evidences showing the sale of concert tickets during the period from 2003 to 2013 have also been submitted, and both of the articles in question have been published in national daily newspapers. – Secondly, the list of concerts given by the band Deep Purple shows the band’s commercial activity in the United Kingdom in the period preceding the date of application for registration of the mark applied for. Although that list details a majority of concerts held outside the United Kingdom as we-*ll, it also mentions numerous concerts and ticket sales in that country between 2003 and October 2013. That finding cannot be called into question by the claimant’s (applicant) contention that “the evidence lacks probative value”, since the claimant has not adduced any evidence in support of that argument. – Thirdly, it must be found that the list of 19 albums recorded and released between 1968 and 2013 also proves that there was trading activity in the United Kingdom as at the date of application for registration of the mark applied for. The claimant’s (applicant) argument that “those albums were not sold in that country” is implausible given the band’s fame there, shown by the press articles, and the fact that one of these articles refers to the sale of 100 million albums thereat. – Fourthly, the claimant’s argument that the evidence has no probative value, on the ground that the intervener adduced no substantiating evidence such as invoices, sales receipts or advertising for the concerts, cannot be upheld, because the press articles are independent proof that Deep Purple is a United Kingdom band which has enjoyed considerable popularity, at least in that territory. Furthermore, the contention that the evidence has no probative value in that it is not supported by any sworn and signed statement must also be rejected for the same reason. In summary, all of these arguments are rejected, and it is decided that the goodwill has been proven to the requisite legal standard. The plea in law alleging that it was wrong to take into account the evidence submitted out of time (1): As will be recalled from the section reporting EUIPO processes, the intervener has submitted some evidences after expiration of the deadline given by EUIPO Opposition Division. Now, the claimant (applicant) alleges that it was wrong to take into account such evidences for substantiation of decision. First of all, the Board of Appeal has the right of discretion to decide whether or not to take into account during the appeal process any of the evidences submitted out of time, i.e. after the end of the deadline given by the opposition division. In addition, it is settled case-law that when evidence is produced within the time limit set by EUIPO, the production of supplementary evidence remains possible. In the present case, the intervener filed evidence within the time limit set, and consequently, it filed supplementary evidence whose admissibility is challenged in the court. The following criteria should be taken into consideration before deciding whether any supplementary evidence not submitted in a timely fashion will be admissible or not: (i) Is the evidence which has been produced late genuinely relevant to the outcome of the application in hand?, (ii) At which stage of the proceedings this late submission has taken place? and (iii) Are there additional circumstances or conditions arguing against such matters being taken into account? In the light of the considerations described in the preceding paragraph, the General Court has come to the conclusion that the evidence in question was genuinely relevant to the outcome of the opposition, and in addition, has found that the claimant (applicant) has failed to demonstrate any additional circumstances or conditions arguing against such matters being taken into account at the relevant stage of submission. In that regard, the plea in law that the Board of Appeal should not take into consideration the evidence submitted out of time limit set was not found acceptable. The plea in law alleging insufficient evidence relating to entitlement of the intervener to a share in any goodwill (3): According to the claimant (applicant), in order to establish that he is entitled to a share in any goodwill, it is not enough for the intervener merely to assert ownership of it. The intervener must also prove that the mark DEEP PURPLE has been made distinctive by him. Consequently, the claimant believes that the decision of the Board of Appeal is wrong because of this reason as well. At the hearing, the claimant (applicant) reformulated the present plea in law and submitted it in a different format. This third plea in law of the claimant is also refused by the General Court in the light of the plea itself and its being reformulated in the hearing, on the ground that the plea in law has not been submitted in a consistent and rational manner and has been reformulated and further limited in the hearing. The plea in law alleging that the decision is erroneous also in terms of the goods at issue covered by the partial refusal (4): – In addition to his pleas described above, the applicant submits that the Board of Appeal erred in refusing registration of the mark applied for in respect of a wider range of goods and services than was justified by the evidence, and claims that the first evidence submitted for substantiation of this argument relates solely to live musical performances. However, the decision is not erroneous as a cumulative assessment has been made together with the evidences submitted after the end of the time limit set thereinfor. – The claimant further submits that the goods and services in respect of which the Board of Appeal found there to be goodwill are very different from and dissimilar to the other goods at issue, and that it may not give rise to a likelihood of confusion in public. On these grounds, the claimant states that the Board of Appeal was wrong to extend the decision to all other goods and services mercandisable by the rock bands in general. – Lastly, the applicant submits that the public will not assume that the use of image or name of a musical band indicates an economic connection with that band, and relies its such assumption on the judgment of the High Court of Justice (England & Wales) Lyngstad v Anabas . EUIPO and the intercener dispute most of these arguments. First of all, within the frame of the case-law on the tort of “Passing Off”, it must be ascertained whether there is a genuine likelihood that the relevant public will be led to attribute the commercial origin of the goods and services to the opponent. Where the goodwill in a name has been established for some goods and services and that name is then used for other goods or services, the existence of a likelihood of misrepresentation will be all the more difficult to prove. While a defendant in an action for passing-off need not be engaged in a common field of activity, the existence of a common field of activity is also a relevant fact in the analysis of alleged misrepresentation. The Board of Appeal has made a correct assessment on this point as well by taking into account all evidences lodged by both the applicant and the intervener, and has found that the evidence shows that clothing merchandise created a significant revenue stream. Although there was no evidence concerning the sale by the band, the Board of Appeal decided that “sunglasses” were sufficiently accessorised with clothing, and that “mouse mats and mouse pads; mobile phone accessories, etc.” products were items commonly decorated with commercial or personal imagery, so that there would be misrepresentation if the applicant marketed that category of items under the name of the band Deep Purple. In addition to his other arguments cited above, Blackmore also relied upon the applications filed by the music group ABBA and the singer Rihanna for interlocutory injunctions based on again the tort of “Passing-Off” in the previous proceedings. However, the judgment given in favour of ABBA dates from 1977, a period when the concept of merchandising was less developed. Concerning the action for passing-off brought by the singer Rihanna against Topshop, which had sold a T-shirt bearing the singer’s photograph without her authorisation, it may be said that this action has exceptionally been upheld in favour of Rihanna for two reasons, namely, first, the fact that Rihanna had previously been publicly associated with Topshop in the context of a promotional campaign, and secondly, the fact that the singer’s image that was used was similar to an image used for the promotion of one of her albums. In that regard, in the present case, the applicant Blackmore was associated with Deep Purple – like Rhinna was with Topshop – because of the fact that until 1993 he was a member of the band. Therefore, this judgment being relied upon again proves Blackmore to be wrong. Although the strict followers know Blackmore as one of the founding members of Deep Purple, in the periods after his separation therefrom, Blackmore mostly made his name with Rainbow and other projects, and even he became famous mainly with those subsequent projects. It is our sincere belief that had the trademark DEEP PURPLE been registered in the name of Blackmore, and above all, had the goods covered by the application for registration been offered for sale by him, it would great probably create a confusion in the minds of related consumers and such products would mostly be demanded particularly by the lovers and fans of the band. Strictly speaking, if we had seen the offering of goods or services by Blackmore under the trademark DEEP PURPLE, we would not pause even for one moment to think that these perfect strangers who do a good job for all musiclovers even when they are separated have again come together as a band. Given that other members of the band are also continuing their musical activities still under this name, we, authors, also think that the decisions of both the Board of Appeal and the General Court are correct and sound. We suppose Blackmore has filed this application for registration believing that he is a kind of “eponym” of the band, but if the rights could be allocated within this framework, we would have to keep the name DEEP PURPLE for Peter De Rose forever and ever… Keeping in mind that almost each Rock band has a story of separation, we are finishing our words with the last verses of “Perfect Strangers”. And if you hear me talking on the wind You’ve got to understand We must remain perfect strangers.