TY - JOUR
AU - Rogers, David
AB - Abstract The authors Arnaud Folliard-Monguiral works in International Cooperation and Legal Affairs, EUIPO, Alicante, and David Rogers works in the Boards of Appeal, European Patent Office, Munich. This article The purpose of this article is to provide a quick overview of the most significant European Union trade mark (‘EUTM’) cases decided in 2017 by the Court of Justice of the European Union (‘CJEU’) and the General Court. The article has a practical bias and is aimed at readers who wish rapidly to find the key decisions of 2017. The cases discussed concern the application of Council Regulation (EC) 207/2009 of 26 February 2009 on the Community trade mark (before amendment by Regulation (EU) 2015/2424 of 16 December 2015 and codification by Regulation (EU) 2017/1001 of 14 June 2015, ‘EUTMR’), Commission Regulation 2868/95 implementing Regulation (EC) 207/2009 (repealed by Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017, ‘EUTMDR’), and Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks (‘the Trade Mark Directive’) (repealed by Directive (EU) 2015/2436 of 16 December 2015). Both the provisions in force on the date of adoption of the Boards of Appeal’s decisions and their corresponding provisions in Regulation (EU) 2017/1001, which have sometimes been changed substantially, will be referred to in this article. Procedural issues Professional representation In its wording before amendment, Article 93(2)(b) of Regulation 207/20091 provided that the inclusion on the list of professional representatives was conditional upon the person concerned having a place of business or employment ‘in the Community’, and not in the ‘European Economic Area’(‘EEA’). The freedom to provide services at EEA level is a fundamental principle established by Article 36(1) of the EEA Agreement. Given the primacy of international agreements concluded by the European Union, such as the EEA Agreement, over provisions of secondary EU legislation, the decision of the Board of Appeal to refuse the status of professional representative to a natural person of Austrian nationality with a place of business in Liechtenstein must be annulled.2 Entitlement to file an opposition or a request for invalidity A notice of opposition may be filed by the proprietor of an earlier mark or another earlier right, or by any of the co-owners if the earlier mark or the earlier right has more than one proprietor.3 The General Court thus quashed the decision in which the Board of Appeal conditioned the entitlement to file an opposition upon the demonstration that the rights in the name of a Chilean music band, which was claimed to be a well-known unregistered mark for entertainment services in Spain, belonged exclusively to the opponent, one of the founding members of the band.4 The successor in title of an EU trade mark is entitled to file an opposition on the basis of this mark, even if the transfer has not yet been entered in the EUIPO register, provided the request for registration of the transfer is submitted together with the notice of opposition.5 The fact that the request for registration of the transfer did not contain documentary evidence in support and erroneously referred to a simple change of name does not invalidate the entitlement to file an opposition, as long as irregularities are remedied before the expiry of the time limit to complete the opposition.6 In invalidity proceedings, where there is a doubt concerning whether or not the applicant for invalidity and the proprietor of the earlier right are the same person or related persons, EUIPO must request clarification, especially when the uncertainty is not attributable to the applicant itself.7 Proof of the earlier right The requirements applying to the admissibility of the action must be distinguished from those applying to the substantiation of the earlier right. The indication of the list of goods and services for which the earlier mark is registered, on the form used for lodging an opposition or a request for a declaration of invalidity, is a condition of admissibility of the action. However, this indication does not make up for the lack of translation of a registration certificate drawn up in a language other than the language of proceedings. For the purpose of substantiating the existence and scope of the earlier right, the translation of the registration certificate must identify the document to which it refers and reproduce its structure and contents.8 Furthermore, all the relevant information of this certificate must be translated, including details concerning the nature and status of the earlier mark.9 Stay of proceedings EUIPO enjoys broad discretion when examining a request to stay the proceedings.10 Such a request may be dismissed even if the validity of the earlier mark is challenged in the context of an action pending before a national court. However, that the Board of Appeal misinterpreted the legal basis and scope of the national action constitutes a manifest error of assessment because it prevented it from properly assessing the chances that this action would lead to the annulment of the earlier mark.11 The dismissal of a request for a stay is also tainted by a manifest error of assessment where the Board of Appeal wrongly assumed that the national proceedings were brought to a close while they were in fact still pending.12 Limitations Regarding pharmaceuticals, a limitation may be partly acceptable if based on a relevant criterion (eg restriction to a specific therapeutic indication), regardless of the fact that reference is made to another criterion which is unsuitable (eg whether these products are sold under medical prescription). Thus, the request for limitation of a mark originally filed for ‘vaginal suppositories’, subsequently specified to ‘non-prescription vaginal suppositories to counteract vaginal dryness and vaginal infections’ should be taken into account only insofar as the therapeutic indication is concerned. The Board of Appeal was entitled to assess likelihood of confusion on the basis of this ‘partly admissible’ and ‘partly inadmissible’ limitation, but it was required to invite the parties to submit observations on the admissibility of the limitation.13 Article 71 EUTMR (ex art. 64 Regulation 207/2009): examination of appeals Where the opposition is based on several earlier rights, the Board of Appeal is entitled to uphold the opposition on the basis of an earlier right which is different from the one examined by the Opposition Division. The Board of Appeal does not have the obligation to invite the parties to submit observations on this choice, since they have no ‘legitimate expectation’ that the Board of Appeal would give a ruling on the basis of the same earlier right as the one examined in first instance.14 Where the applicant did not put forward any arguments to challenge the evidence of genuine use of the earlier mark in its statements of the grounds of the appeal, the Board of Appeal is not entitled to carry out an ex officio examination of this matter.15 Nevertheless, in revocation proceedings, the Board of Appeal must examine ex officio all the relevant factors, including the aspects relating to the geographical scope and the nature of the use, notwithstanding the fact that the grounds of the appeal challenged only the importance of the use.16 Pursuant to Article 8(3) of the Rules of procedure of the Boards of Appeal,17 the defendant before the Board of Appeal may lodge a cross-appeal by seeking in his response a decision annulling or altering the contested decision on a point not raised in the appeal.18 Consequently, in inter partes proceedings, the appellant is exposed to the risk that the decision on appeal would be even less favourable than that of the first instance, without this decision infringing the prohibition of reformatio in peius.19 After the General Court annulled its decision, the Board of Appeal is bound not only by the operative part but also by the reasons set out by the General Court in its judgment. Where the General Court held that the Board of Appeal erred in considering that an aural comparison was impossible between a complex and a purely figurative mark, this matter becomes res judicata and can no longer be challenged in a further appeal before the General Court.20 However, the obligation imposed by the General Court on the Board of Appeal to examine a specific legal factor, such as the degree of saturation of the state of art in design matters, is without prejudice to the conclusions drawn by the Board of Appeal after examining the facts surrounding the application of that factor or to their impact on the merits of the dispute.21 Article 94, first sentence, EUTMR (ex art. 75 Regulation 207/2009): duty to state reasons Where the opponent relies on a legal factor which is likely to facilitate the finding of likelihood of confusion, such as the existence of a family of marks, EUIPO cannot dismiss the opposition without examining first if the conditions for the application of this factor are met in the case at hand.22 Where the Board of Appeal did not expressly identify the degree of similarity between the signs, it must be pointed out that it implicitly, but necessarily, acknowledged that the signs were similar to an average degree.23 In the assessment of likelihood of confusion, the failure to adjudicate on some of the goods and services aimed at professionals does not necessarily imply the annulment of the decision where the Board of Appeal found that there was no likelihood of confusion as regards other goods and services, also aimed at professionals.24 EUIPO can base its decisions on well-known facts without having to establish their accuracy. If a party wishes to challenge the material correctness of such facts, it should not limit itself to claiming that the fact is not well-known; it must also put forward arguments showing that this fact is not accurate.25 EUIPO is allowed to submit counter-evidence before the General Court.26 Article 95(1), first sentence, EUTMR (ex art. 76(1) Regulation 207/2009): examination of the facts An action may be admissible unless the defendant proves that the claimant had expressly renounced its right to file an opposition or a request for invalidity against it. EUIPO is thus entitled to interpret agreements between the parties, such as a conciliation agreement, in order to verify whether one of the parties expressly waived its right to oppose a trade mark application filed by the other party.27 Article 95(2) EUTMR (ex art. 76(2) Regulation 207/2009): discretionary power and admissibility of evidence not submitted in due time EUIPO ‘may disregard facts or evidence which are not submitted in due time by the parties concerned’. The stage of proceedings at which additional evidence is submitted is a relevant criterion. Therefore, the Board of Appeal was entitled to reject additional proof of use submitted together with a rejoinder. Regardless of the relevance of the evidence, its late submission alone justifies its inadmissibility.28 The General Court confirmed its past case law based on the distinction between the late submission of ‘entirely new evidence’ and that of ‘additional or supplementary evidence’, the discretionary power of Article 95(2) EUTMR being inapplicable to the first category. In case of non-receipt of a request for proof of use of the earlier mark, the evidence produced for the first time before the Board of Appeal is necessarily ‘entirely new’. Since EUIPO does not have discretionary power with regard to such evidence, its admissibility depends only on the date on which the request for proof of use is deemed to have been notified to the opponent.29 Where an applicant for invalidity was dismissed after the applicant was denied the possibility to reply to the other party’s criticism regarding the evidence of use of the earlier mark, the opponent must be allowed to supplement its original proof of use by submitting supplementary evidence before the Board of Appeal.30 In the context of an opposition based on Article 8(4) EUTMR, if the only piece of evidence submitted in due time was that aimed at proving the use of the earlier right, then evidence of the content of the national law relied on, produced for the first time before the Board of Appeal, is inadmissible. Evidence of the content of the national law is new and not supplementary. Even if it was supplementary, the discretionary power under Article 95(2) EUTMR could not lead to the admissibility of such evidence at this stage of the proceedings. The opponent should have known that it was required to submit evidence as to the content of the national law from the very beginning.31 Procedures before the General Court The General Court, like the CJEU, has jurisdiction to declare provisions of secondary EU legislation contrary to the primary law of the EU.32 Although offers of new evidence before the General Court are in principle inadmissible, this does not apply to EUIPO decisions. The submission of EUIPO decisions is allowed before the General Court, even after the closure of the written procedure. However, a claim relating to the existence of a family of trade marks, submitted for the first time before the court, amounts to a new argument altering the subject matter of the dispute and thus is inadmissible.33 Pleas or arguments submitted before EUIPO can be amplified, provided that, in its amplified form, the plea or the argument submitted before the General Court remains closely connected with that submitted before EUIPO. In revocation proceedings, the claim by which a party challenges, for the first time before the General Court, the importance of the use of the contested mark is not an amplification of the original plea submitted before EUIPO, according to which the use of the mark by a third party had been made without the consent of the proprietor of this mark. This new plea is thus inadmissible.34 Absolute grounds for refusal Article 4 and 7(1)(a) EUTMR: representation of the sign Red Bull GmbH had obtained registration, on the basis of acquired distinctive character, for the combination of the colours blue and silver represented in two equal vertical blocks. The description contained an indication regarding the respective proportions of these colours (in the ratio 50:50) and the fact that they were ‘juxtaposed to each other’. Following a cancellation action, the General Court found that such a sign was not apt to be perceived unambiguously, uniformly and durably. Such a combination does not associate the colours in a ‘predetermined and uniform way’ because it allows numerous different combinations of the two colours at issue. This juxtaposition can take different forms, giving rise to different images or layouts, while still being ‘in equal proportion’. Such a conclusion was corroborated by the evidence submitted by Red Bull GmbH in support of the claim that its mark had acquired distinctive character. The documentary evidence reflected a use of the colour combination on the product’s packaging following a different pattern from that given to the sign as registered, notwithstanding the fact that the colours were displayed in the same proportions. Third parties’ legal security prevents a proprietor from filing a representation ‘while at the same time claiming a broader protection than that afforded by that representation or which does not correspond to it’.35 Article 7(1)(b) to (j) EUTMR: the different absolute grounds for refusal Categorization of the mark The Implementing Regulation 2017/1431, which entered into force on 1 October 2017, has introduced new categories of signs, some entirely new (such as multimedia marks) and some others already acknowledged by the General court’s case law (such as position marks). The categorization of marks has legal consequences since the applicant makes a choice determining the scope of the protection awarded, according to the type of mark applied for. The distinctive character must be examined in the light of the category chosen by the applicant.36 If it were not so, the requirement to indicate the category of the mark would be deprived of effet utile. Article 7(1)(b) EUTMR: the distinctive character Relevant public The fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. The higher degree of attention of a specialist public does not necessarily imply that a weaker distinctive character of a sign is sufficient.37 The higher degree of attention of a specialist public however remains a relevant factor. The lack of consideration of this higher degree of attention results in a violation of the duty to state reasons.38 Where two categories of consumers are targeted by the mark, a specialist public and the public at large, the distinctive character may be examined against the perception of the least attentive part of the relevant public, unless it is an insignificant part of the public.39 Figurative marks Where a figurative sign coincides with the shape of the product for which it is applied or of a part thereof, it may only be registered if the shape at issue diverges significantly from the norms of the sector. This case law, which relates to signs that are indissociable from the appearance of the products, applies to a figurative sign representing packaging, regardless of the fact that it contains a coloured graphic element.40 In the context of Article 7(1)(e)(ii) EUTMR (functional shapes), the essential characteristics of a shape must be assessed in the light of the technical function of the actual goods concerned.41 However, in the context of Article 7(1)(b) EUTMR, the distinctive character of a mark must be assessed as it appears in the trade mark application, regardless of how it is used. Thus the fact that a trade mark applicant sells knitting needles covered with a characteristic coloured chevron pattern does not necessarily imply that a figurative sign consisting of a different chevron pattern (an abstract shape) will be perceived as a specific aspect of the goods produced by this applicant.42 Three-dimensional marks The common shape of a lighter is devoid of distinctive character in respect of advertising services given that lighters constitute marketing tools. The fact that the shape contains the word element ‘Clipper’ does not render the shape distinctive in view of its insignificance.43 Position marks Where a sign consists of an aspect of a given product (such as curved strips positioned on the side of a tyre), which does not coincide with the product applied for (such as rims and covers for the wheels of vehicles), the examination of its distinctive character must be limited to the goods on which the sign is intended to be affixed. This is a direct consequence of the nature of the mark applied for, namely, a ‘position mark’ affixed to a specific product.44 Article 7(1)(c) EUTMR: descriptive signs The sign consisting of the word ‘медведь’ which means ‘bear’ in Russian is descriptive in respect of foodstuff which could contain bear meat, regardless of the fact that Russian is not an official EU language. It is enough that Russian is spoken and understood in a significant part of the EU, namely the Baltic States, and that the sale of bear meat is not uncommon in such countries. The limitation by which the applicant seeks to exclude products having bear meat as an ingredient is ineffective as it would render the mark deceptive.45 Simple figurative elements of complex signs may rule out a refusal under Article 7(1)(c) EUTMR only if they diminish or change the meaning of the word elements and if their primary role is not merely ornamental.46 Since the sign ‘Second display’, which denotes that products have an extra screen or a screen measuring seconds, is descriptive in respect of a main product (inter alia smart phones and watches), it is also descriptive both in respect of spare parts and accessories (such as leather covers, software and ancillary electronic devices) the uses of which are not independent of this main product.47 Article 7(1)(e)(ii) EUTMR: shape which is necessary to obtain a technical result The fact that the sign has ornamental and fanciful aspects and is capable of performing the essential function of a trade mark does not preclude Article 7(1)(e)(ii) EUTMR from applying, if those aspects do not play an important role in the shape of goods at issue and if all the essential characteristics of this shape perform a technical function.48 The word element affixed on a shape of a lighter is not an essential characteristic if it is of minor and secondary importance in relation to the shape of the lighter at issue. The technical functionality of the essential characteristics of the lighter can be established on the basis of utility models disclosing shapes and characteristics which, without being strictly identical to those of the sign applied for, bear a close resemblance to each other.49 Article 7(1)(f) ETMR: public policy A trade mark may not, as a matter of principle, be considered contrary to accepted principles of morality or public policy for the sole reason that it consists of, or includes a work for which copyright protection exists or has expired. Refusal may however be justified where the works in question (such as the sculptures of the emblematic Norwegian artist Gustav Vigeland) hold a particular importance in collective memory and cultural heritage, as an emblem of sovereignty or of the nation’s foundation and values, regardless of the fact that the trade mark applicant is a public authority.50 It cannot be excluded that the registration as a trade mark of the name of a spiritual guide be considered offensive in some cases. However, the registration of the sign ‘Osho’, which refers to an Indian guru, for yoga and meditation services, is not contrary to public policy. This is so because there is no antagonism between the nature of the services applied for and Osho’s teachings and because his name was not known to a significant part of the European public at large on the date of filing of the mark.51 Article 7(1)(g) EUTMR: deceptive marks Article 7(1)(g) EUTMR presupposes the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived. The sign ‘Klosterstoff’ which is descriptive in respect of alcoholic beverages is deceptive in respect of non-alcoholic beverages.52 In turn, a sign such as ‘Antico Casale’ (‘old hamlet’ in Italian) which is not descriptive of the geographical origin of foodstuff is not liable to deceive the public as to such characteristic.53 Article 7(1)(j) EUTMR: trade marks consisting of, or containing protected designations of origin The geographical indication ‘Sicilia’, which is protected in respect of wines following Regulation 1308/2013, is a bar to the registration of the trade mark ‘Tempos Vega Sicilia’, for alcoholic beverages without specification as to their geographical origin. Neither the reputation acquired by the mark applied for in respect of Spanish wine nor the registration in Spain, by the same proprietor, of a series of marks including the word ‘Sicilia’ even before the date of protection of the geographical indication in its country of origin, allows derogating from the prohibition to refuse marks which contain or consist of a geographical indication identifying wines, with respect to such wines not having that origin.54 The absolute ground for refusal extends to all alcoholic beverages to the extent that this general category includes wines.55 The mark ‘Toscoro’ for vegetable oils and olive creams is liable to evoke the geographical indication ‘Toscano’ for olive oil.56 Article 7(3) EUTMR: acquisition of distinctiveness through use Territorial scope of the use Proof of the acquisition of distinctive character in respect of a trade mark which is descriptive in English and which was filed in 2007 must concern the UK, Ireland and other Member States in which English is an official language (Malta) or Member States in which consumers are known to have a good command of English such as the Netherlands, Finland, Denmark, Sweden and Cyprus. The General Court recalled that it would be unreasonable to require proof of acquisition of distinctive character through use with regard to each of these individual Member States. ‘The extrapolation of the acquisition of distinctive character through use in certain Member States to other Member States cannot be ruled out, in so far as objective and credible factors permit the view that those markets are comparable in so far as concerns the perception of the contested mark by the relevant public.’57 Use as a trade mark Acquired distinctiveness must be as a result of the use of the mark as a trade mark, and not as a purely descriptive indication, or as a trade name the main function of which is not to distinguish goods or services. Use of a sign as a domain name may be made ‘in relation to goods or services’ (and may therefore be deemed to be use as a trade mark) where a link can be established with the goods or services offered by the legal entity in question. This applies to the trade mark ‘bet365’, for betting and gambling services, which has been used as part of the domain name ‘www.bet365.com’, this website being the applicant’s main sales channel for its services. A customer who connects to this website uses the contested mark to identify services offered by the applicant ‘in the same way as a customer returning to a shop whose sign corresponds to the mark of the goods and services that he is looking for, which are sold there’.58 Likewise, use of a sign can be made concomitantly as a company name and as a trade mark. Whereas general information concerning the applicant in the financial press only refers to the sign ‘bet365’ as a company name, the appearance of this sign ‘in the sporting press or specialist gambling and betting press, for example, in association with betting odds, a comparison of services offered by different providers, or in the context of sponsorship of sporting events which constitute the betting medium, clearly illustrate its use as a mark in order to designate the origin of the services proposed or referred to, to distinguish them from services of the applicant’s competitors and, as the case may be, to promote them’.59 Proof that the applicant’s products, namely tyres, enjoyed wide televised media coverage during the Formula 1 Championship does not prove that the public recognizes the origin of the goods at issue because of the mark which consisted of a pair of curved strips positioned on the side of a tyre. The strips were affixed to Formula 1 championship racing car tyres, but they appeared only in conjunction with the mark ‘Pirelli’.60 Proof that the trade mark applicant ranks among the world’s biggest companies having regard to capitalization, profits and capital is irrelevant to the extent that such information only refers to the global turnover and not to that obtained by the provision of specific services supplied under the mark applied for.61 Article 59(1)(b) EUTMR: bad faith The existence of a contractual or even pre-contractual relationship implies a duty of loyalty between the parties. The registration of the trade mark ‘Venmo’ may have aimed at consolidating legal protection for the domain name ‘venmoney.net’ but the filing was made in bad faith since the applicant had the intention to prevent a competitor, who was already using there the sign ‘Venmo’ in the United States, from entering into the EU market. The filing of the EU trade mark occurred in the context of direct relations with a view to concluding a licence agreement with the US legitimate proprietor. The fact that this filing was never followed by any use in the EU was also relevant. Finally, the trade mark applicant never informed the US legitimate proprietor of its intention to protect the mark ‘Venmo’ in the EU. The filing can thus be regarded as a ‘concealed act’ which corroborates a finding of bad faith.62 Circumstances subsequent to the application of the contested trade mark may be relevant when examining the applicant’s bad faith on the date of filing. The fact that the legitimate proprietor, after discovering one year later the existence of a registration made in the name of a former distributor, requested its immediate transfer may support the view that it had never consented to the registration by this distributor. In turn, the fact that the distributor expressly undertook to transfer that mark, but never did so is clear indication of its bad faith.63 In a rather surprising judgment, the General Court found that bad faith did not apply to a case in which a EU trade mark application had an ‘undeniable degree of similarity’ with the earlier marks held by a former business partner. In spite of the established knowledge of the earlier marks, the EU trade mark applicant’s conduct was not in bad faith because the services covered by the EU trade mark and those earlier marks were not similar. According to the General Court, ‘bad faith … must be assessed, inter alia, in the light of the likelihood of confusion between a sign used by a third party and the sign for which registration is sought, which presupposes identity or similarity not only between the signs, but also between the goods or services in question.’64 Relative grounds for refusal Article 8(1)(b) EUTMR: likelihood of confusion Class headings The ‘IP Translator’ ruling65 and Communication No 2/12 of the President of EUIPO, regarding the impact of the designation of a class heading, continue to influence case law. The CJEU held that the obligation for an applicant, who uses the general indications of a class heading to specify whether the protection is sought for all the goods or services listed in the alphabetical list of the said class or only for part of the goods or services, does not apply to trade marks already registered on the date of adoption of the ‘IP Translator’ ruling.66 As a consequence, until the entry into force of Article 33(8) EUTMR, an EU trade mark registered before 19 June 2012 for the class heading of Class 35 was deemed to be protected for all services falling under this class, including retail services which are not mentioned in the alphabetical list. Along the same reasoning, the CJEU held that the ‘Praktiker’ ruling,67 according to which the applicant must specify the goods or types of goods to which the retail services relate, only applies to trade marks registered after its date of adoption.68 Article 33(8) EUTMR is a transitional provision. It allows the proprietor of an EU trade mark applied for before 22 June 2012, where he designated a class heading, to declare before 24 September 2016 that his intention, on the filing date of the application, was to seek protection for goods or services other than those covered by the literal meaning of the class heading, provided they appear in the alphabetical list of that class. The purpose of this provision is not to extend, ex post, the scope of protection of an EU trade mark. The goods or services other than those covered by the literal meaning of the class heading (‘orphans’) are deemed to be covered from the outset by a registration designating a class heading.69 Precision of the designation of goods or services Where the designation of goods or services lacks precision, the scope of the mark must be interpreted narrowly. ‘The proprietor of the trade mark should not gain from the infringement of its obligation to draw up the list of goods with clarity and precision.’70 As an illustration, the General Court found that the service of ‘bringing together, for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase those goods from general merchandise retail stores’ include ‘shopping arcade’ services. However, the absence of any indication of the goods subject to this retail service precludes any association with the goods covered by the other trade mark. A comparison between these services and any good which may be sold in the various shops comprising a shopping arcade is impossible.71 Criteria of similarity and essential function The relevant criteria for assessing the similarity of goods or services are defined according to the objective pursued by Article 8(1)(b) EUTMR, that is to say preventing a likelihood of confusion as to the commercial origin. Notwithstanding the fact that an earlier mark is a collective mark consisting of a geographical name such as ‘Darjeeling’, the possibility that the public might believe that the goods and services covered by the signs at issue have the same geographical origin is not a relevant criterion for establishing their similarity. The CJEU recalled that the essential function of a collective mark, whether or not constituted by a geographical name, is to guarantee the collective commercial origin of the goods sold under that trade mark, as opposed to the essential function of PDO/PGIs, which is to guarantee the geographical origin of the goods and the specific qualities inherent in them.72 Neither the distinctive character of the earlier mark nor the similarity of the signs and their perception by the public are relevant factors when examining the similarity of the goods and services.73 Burden of proof In opposition proceedings, the opposing party has the opportunity and not the obligation to adduce evidence in support of the opposition, in particular as regards the similarity of the goods and services concerned. In the absence of evidence and arguments submitted by the parties as to the similarity of highly specialized medical products, EUIPO is free to require from the parties, as a measure of inquiry, the production of documents enabling it to rule on this similarity.74 Impact of the exclusion of certain goods The fact that the goods covered by the earlier mark (‘pharmaceutical products for use in oncology’) are expressly excluded from the list of goods covered by the trade mark application (‘pharmaceutical products and medicines not for use in oncology’) is not sufficient to exclude any similarity of the goods in question.75 Sportswear and sporting articles Clothing and footwear include clothing and footwear for sports in general, but they are similar only to an average degree to specialized sporting goods, such as ‘clothing for cycling’. ‘Clothes’ and ‘gymnastic and sporting articles’ are similar to a low degree.76 Health-related goods and services Notwithstanding their different therapeutic indication, pharmaceuticals are similar to an average degree, regardless of whether or not they are subject to medical prescription. ‘Medical devices’ are complementary to ‘medicines’.77 The degree of similarity between ‘pharmaceuticals’ in general and ‘food and dietetic supplements’ is average, but it becomes low when the pharmaceutical products in question have a specific therapeutic indication.78 Foodstuffs ‘Foodstuffs’, including alcoholic and non-alcoholic beverages, are similar to a low degree to ‘bar and restaurant services’. A restaurant service is defined not only by the kind of product that is offered but also by the conditions under which this service is rendered.79 Multi-purpose goods The fact that some products are multifunctional does not preclude them from being similar to other products in consideration of one of these different functions. Shutters and jalousies are complementary and share the same function of preserving privacy. They are similar regardless of whether shutters can perform another function—namely an anti-break-in function.80 Unprocessed raw materials and finished goods Where end products are aimed at a non-professional public, they are neither complementary nor similar to raw materials or components necessary for their manufacture, since these products are aimed at different publics.81 Printed matter There is no complementarity or similarity between a service (ie tax and legal advice) and printed matter regarded as a written support of such services.82 Comparison of signs: methodology In determining which is the dominant element of a sign, only the inherent distinctiveness of each of the elements composing this sign is relevant. In turn, the distinctive character (inherent or acquired through use) of the mark as a whole, or the distinctiveness acquired through use of one of the elements of that mark, are not relevant for determining which is the dominant element.83 Similarly, the existence of a series or ‘family’ of trade marks is irrelevant in the assessment of the similarity between two signs, even though it must be taken into account in the global assessment of the likelihood of confusion.84 Marketing methods Visual differences between purely figurative marks designating spectacles cannot be attenuated by the claim that those marks are intended to be affixed in small characters onto the arms of spectacles. The use that the proprietors intend to make of their mark, either by a small reproduction on the products or in large format in advertising, is not a relevant criterion because it concerns subjective commercial intentions.85 Composite marks In composite signs, word elements are generally more likely to be the dominant elements,86 particularly where the figurative elements are merely decorative.87 This rule of experience allows exceptions. This is particularly the case when the figurative element occupies a significant part of the sign and is endowed with a clearly identifiable conceptual content that makes it capable of being memorized independently from the verbal element.88 Reproduction of the earlier mark The inclusion of the earlier mark in the mark applied for will normally render the signs similar.89 The same reasoning applies where the mark applied for is included in the earlier mark.90 By exception, the compared signs may not be similar if the sign applied for forms a logical unit on its own in which the earlier sign cannot be viewed independently.91 Phonetic similarity A purely figurative mark cannot be pronounced. At best its conceptual or visual content can be described orally, provided that the semantic content of the purely figurative mark can immediately be associated with a specific, concrete word. This is not the case where the mark applied for reproduces the head of a canine, which is capable of being perceived as a wolf, a dog or a fox, and whose menacing features tend to reinforce the uncertainty as to the attribution of a precise word. In such a case, the phonetic comparison of a purely figurative mark with a composite mark containing a word element is impossible.92 However, in a similar case, the General Court departed from its case law and considered that a phonetic comparison remains possible between a purely figurative mark and a composite mark whose verbal element will be pronounced.93 Conceptual similarity Conceptual differences may counteract visual and phonetic similarities. It is not required that both signs at issue have clear and specific meanings. Visual and phonetic similarities may be neutralized provided that one of the signs has a meaning, even though the other sign, taken has a whole, has no such meaning.94 Nonetheless, this result is never automatic and the neutralizing effect of the conceptual differences is of course stronger where the two compared signs have a different meaning.95 The assessment of the conceptual similarity requires considering the signs as a whole. Even though the two signs ‘Multipharma’ and ‘Mundipharma’ are distinguished by their prefix, their overall conceptual content may not be sufficiently univocal and specific to neutralize their visual and phonetic similarities.96 However, a combination of elements capable of arousing a similar evocation may be sufficient to establish a degree of conceptual similarity, notwithstanding the fact that the signs convey no clear concept as a whole.97 Single letters Where two signs are perceived as the representation of the same letter, they are considered aurally and conceptually identical. Despite some visual differences, there may be likelihood of confusion for a significant part of the public, even though the distinctive character of a sign consisting of a single letter is weak.98 Surnames The fact that ‘Versace’ is a common surname in Italy is irrelevant for assessing the likelihood of confusion.99 Unless a surname is associated with a person easily identifiable by the public, there are no conceptual differences between two signs consisting, on the one hand, of a full name and, on the other hand, of a first name or surname.100 The existence of registered trade marks and corporate names including the surname in question is not sufficient to demonstrate that it would be widespread and would have a weak distinctive character.101 Likelihood of confusion and geographical origin The absence of confusion with respect to the geographical origin of the goods does not preclude likelihood of confusion as to their commercial origin, even in the sector of wine products in which the geographical origin is an important element of the purchaser’s choice.102 Likelihood of confusion and oral communication Phonetic similarity between two signs may be sufficient to establish likelihood of confusion which, as the case may be, can be limited only to those goods and services for which the public is ‘exposed to the marks being pronounced’, such as services of ‘radio broadcasting’ or ‘radio entertainment’. In turn, for the goods and services for which the trade mark is subject to visual inspection, as well as those aiming only at professionals, significant visual differences may counteract aural similarity and rule out likelihood of confusion.103 Likelihood of confusion and fraudulent strategies The alleged bad faith of the trade mark applicant and the strategy surrounding the contested application are irrelevant in the assessment of likelihood of confusion.104 Independent distinctive position The registration of the mark ‘Post’ for postal services does not imply that it must be recognized as having a degree of distinctive character such as to give its proprietor an unconditional right to oppose the registration of any later mark in which its mark is reproduced. The General Court ruled out any likelihood of confusion between ‘Post’ and ‘Postmodern’, for identical services. The sign ‘Post’ does not hold an independent distinctive position in the later trade mark, which is characterized by a play on words between the cultural movement and postal services.105 Case law appears unsettled as to whether the notion of ‘independent distinctive role’ may extend to cases in which the earlier sign or an element of this earlier sign is imitated,106 or whether it requires the reproduction of the earlier sign in the mark applied for, without any alteration.107 An element may play an independent distinctive role within a sign consisting of several elements juxtaposed without space provided the public will break it down into different components.108 The addition of a figurative element may form, together with the verbal element, a ‘logical unit’ on its own, provided that there is an interaction between the two elements. Thus, the word element ‘Toro’, corresponding to the earlier mark, loses its individuality in the unit formed by the term ‘Badtoro’ associated with the device of a threatening bull, the word element ‘Badtoro’ being inseparable from the device.109 Likelihood of confusion and weak common elements A descriptive suffix cannot be ignored for the sole reason that it is descriptive, if the signs at issue have the same structure and a similar overall configuration.110 The descriptive character of a term should be assessed with regard to the perception of the relevant public. There is a likelihood of confusion between the signs ‘SeboCalm’ and ‘Sebotherm’ for cosmetics since the prefix ‘sebo’ has no meaning for the non-professional Eastern European public.111 Likelihood of confusion and weak marks Although the letter ‘X’ is commonly used to describe specific characteristics of tyres, there is a likelihood of confusion between an earlier mark consisting of the slightly stylized letter ‘X’ and the sign ‘XKing’ applied for identical goods, namely tyres.112 Enhanced distinctiveness acquired through use Where an EU trade mark is shown to have enhanced distinctiveness in a specific Member State, EUIPO may confine its assessment of likelihood of confusion to this Member State. If no likelihood of confusion is found there, it is up to the opponent to demonstrate in which territories of the European Union the earlier mark would have an even higher degree of distinctiveness and to explain how the conditions outside the Member State where enhanced distinctive character was acquired would be more favourable for the purpose of concluding that there is a likelihood of confusion.113 The reputation of the mark applied for is irrelevant.114 Coexistence Coexistence supposes that the mark applied for has coexisted with the earlier mark. The coexistence of the earlier mark with a sign identical to that constituting the trade mark application, but used as a domain name, has no effect on the assessment of the likelihood of confusion.115 Coexistence of the earlier mark with signs which are merely similar to the one applied for, or coexistence limited to certain Member State while the earlier mark is an EU trade mark, is without impact on likelihood of confusion.116 A list of results obtained on a search engine does not suffice to identify which marks are actually used on the market, or the territories in which these marks are used.117 A coexistence agreement limited to one Member State has no effect on the assessment of likelihood of confusion in other Member States. Moreover, a coexistence agreement does not establish any consent to the registration of the mark applied for.118 Series of trade marks For the sign applied for to be perceived as a member of the series or ‘family’ of earlier trade marks, the element shared by all those trade marks must be a true common denominator. The General Court dismissed the argument based on the existence of a series of marks derived from the word ‘Post’ and including, inter alia, ‘Infopost, E Post, E Postbried, Postident, etc.’ on the ground that the opponent had ‘not proved that the relevant public would perceive these marks as belonging to the same family owned by the [opponent]’. The acknowledgement of the existence of a series of marks derived from a non-distinctive element would lead to an unjustified monopolization of this element.119 The opponent must provide evidence that the earlier trade marks, or at least a sufficient number of them, have been used in order to constitute a family of trade marks. The evidential value of the documents submitted by the opponent is assessed in the same manner as for the assessment of genuine use.120 This remains the case even where the marks constituting the family have not been registered for more than five years and are thus not yet subject to the obligation of genuine use. Circumstances of use and perception of marks The relative importance of visual or phonetic perception in the overall assessment of the likelihood of confusion depends on the usual circumstances of purchase of the goods and services at issue. The case law is still unsettled in a number of areas, particularly alcoholic beverages. In 2017, some judgments considered that any phonetic similarity must prevail over visual differences, given that drinks are often ordered orally.121 Other judgments, on the other hand, ruled that the visual aspect is more important since the marks identifying the drinks are visible during the off-the-shelf purchase as well as on the menus of bars and restaurants.122 Some services, such as bar and catering services, would be particularly apt to be referred to orally,123 while financial services would be essentially contracted after a visual inspection of the marks on commercial documents.124 Opinion polls Opinion polls aiming at demonstrating the absence of likelihood of confusion do not have probative value if the marks at issue were presented simultaneously to the respondents, since likelihood of confusion must be examined in the light of an imperfect recollection.125 Article 8(4) EUTMR: non-registered marks and other signs used in the course of trade Conditions set out by the law of the Union An opposition may be based on ‘a non-registered trade mark or another sign used in the course of trade of more than mere local significance’ provided that the national or EU law governing that sign enables its proprietor to prohibit the use of the EU trade mark (Article 8(4) EUTMR). The General Court annulled a decision by which the Board of Appeal rejected an opposition based on an earlier right identified by the Board as a ‘non-registered trade mark’ and whose protection was claimed for all the goods and services in all classes. Firstly, the General Court held that the earlier right was claimed not as a ‘non-registered trade mark’ but as ‘another sign’, so that the absence of proof of use of this sign as a trade mark (that is, as an indicator of commercial origin) did not justify in itself the dismissal of the opposition. Secondly, the claim for protection for all the goods and services in all classes was not considered to be excessively vague given that the sign at issue consisted of a bar code associated with the trigram ‘520’ and was claimed to guarantee the identification and traceability of all types of goods and services across all sectors.126 The applicant for a declaration of invalidity must establish that the sign relied on was used in the course of trade not only on the date of filing of the application for a declaration of invalidity, but also on the date of filing of the contested EU trade mark. Where proof of use is limited to the period prior to the date of filing of the contested EU trade mark, proof may be lacking that the sign relied on was still in use in the course of trade five years later, that is, on the date of the application for a declaration of invalidity. In such circumstances, the application for a declaration of invalidity must be dismissed.127 The use of a sign as a corporate name and a trade name in commercial documents and invoices sent to customers outside Germany does not establish that the scope of use of the sign at issue would significantly exceed the region of establishment of the opponent. The mere existence of a dozen stores and an online sales platform identified by a sign corresponding the corporate name and trade name relied on in the opposition, is not sufficient to demonstrate use of more than mere local significance in the absence of evidence regarding the economic importance of the use of the sign.128 The national law relied on and the right to prohibit the use Where the Board of Appeal applies national law in disputes concerning the application of Article 8(4) EUTMR, the General Court may review the legality of the decision in the light of a judgment of a national court which postdates such decision. Given its retroactive effect, a change in the case law subsequent to a decision may justify its cancellation even though it was not vitiated by any error of law on the date of its adoption.129 Article 8(5) EUTMR: marks with reputation Proof of reputation The fact that the statements signed by third parties on the basis of a draft were prepared by the opponent party is not, in itself, such as to adversely affect the reliability and credibility of those documents nor call into question their evidential value.130 Where the documentary evidence of reputation of an earlier mark originates from the opponent itself, it must be, at least in part, corroborated by elements having a neutral source. Such supporting documents may consist of annual activity reports the data of which are certified or easily verifiable.131 Reputation of an earlier mark is not adequately proven where the evidence submitted relates only to the knowledge of the mark by professionals, while the goods at issue, namely sporting goods, are aimed not only at professionals but also at the general public.132 Reputation of an earlier mark may be established by national decisions, provided these decisions refer to the specific elements on which they are based. Failing this, it is up to the party intending to rely on those elements to produce them. While photographs of personalities carrying the goods at issue attest some promotional activities, they do not in themselves give any indication of the amount of investment made in promoting the mark.133 Use of a sign as a company name is in principle not a use made ‘in relation to goods’ (and thus is not deemed to be use as a trade mark), unless the sign at issue is affixed to goods or used in a way that a link can be established with the goods offered by the legal entity in question.134 The knowledge of a company name in the context of the distribution of sporting articles can therefore not be presumed to extend to the knowledge of an identical mark for sporting articles.135 Territorial scope of reputation Proof of reputation of an EU trade mark need not be shown for the entire EU, but must be shown for a substantial part of it, which may consist of the territory of a single Member State.136 In line with this principle, the reputation acquired in the United Kingdom by an EU trade mark registration for clothing articles suffices for this mark to benefit from the enlarged protection foreseen under Article 8(5) EUTMR.137 The link The existence of a ‘link’ between the marks is a prerequisite for establishing any kind of damage to the mark with reputation. The fact that two signs have a low overall similarity resulting from a common element such as ‘sol’ or ‘sole’ for wines, which widely used in the relevant market and which thus has only weak distinctive character, is not sufficient for the relevant public to be capable of associating them.138 Proximity of the goods There is at best a very limited proximity between ‘clothing’ on the one hand and ‘furniture and interior decoration accessories’ on the other, which relies only on the sporadic cooperation between the interior design industry and fashion designers, and the fact that many magazines dedicated to fashion also cover the sector of interior design. In view of the fact that the similarity between the marks ‘Gap’ and ‘Gappol’ is not high, that the degree of proximity between the goods is only limited and that the attention of the relevant public is likely to be higher when purchasing furniture, the establishment of a link between those marks would have required evidence that the earlier mark had acquired a sufficiently strong reputation, which was not demonstrated in the case at hand.139 Taking unfair advantage of reputation (free-riding) A claim of parasitism can be supported by evidence relating to the actual commercial use of the mark applied for, regardless of the fact that such use takes place in a third country. The principle of territoriality concerns only the geographical scope of protection of a mark and not the manner in which the mark applied for may be used in the EU. The evidence of use remains relevant if it relates to a use of the mark applied for in combination with presentational features (such as the use of a certain combination of colours or the addition of the word ‘Cola’) which facilitate a linkage between the marks at issue. It is up to the trade mark applicant to demonstrate that the use he makes or intends to make of his mark in Europe involves presentational features that are different from those used outside Europe.140 Detriment caused to the repute of the earlier mark (tarnishment) The risk of tarnishment requires antagonism between the goods or services for which the earlier mark has acquired reputation and those covered by the mark applied for, such as the incompatibility of images existing between ‘household cleaning products’ and ‘cosmetics’.141 Prejudice caused to the distinctive character (dilution) Notwithstanding the reputation of the mark ‘Burlington Arcade’ for sale services in an upmarket shopping arcade in London, the use of a mark including the word ‘Burlington’ for clothing and cosmetics is not such in itself as to affect the commercial attractiveness of that shopping arcade. First, this attractiveness is closely connected with the services performed by the tenants of the shops in that arcade, not solely with the arcade’s name. Secondly, the name ‘Burlington’ corresponds to the name of other very well-known places near that arcade.142 Article 60(2) EUTMR: right to a name The protection of a surname requires that, used by itself, it necessarily evokes the person claiming the infringement of a right attached to it. Where a surname has been used for many years in the hotel industry by several members of the same family, it is not established that the mark refers exclusively to one member of this family. Furthermore, the person invoking the protection of his name under the national law of a Member State must prove the content of this law and produce particulars establishing how the law is applied.143 Use of the mark Article 18(1)(a) EUTMR: use in a form differing from the form of the registration Word marks Genuine use can result from the ‘use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered’ (Article 18(1)(a) EUTMR; ex Article 15(1)(a) Regulation 207/2009). The use of word marks in a particular graphic form, in terms of colour and/or font, is unlikely to have any significant impact on their distinctive character as registered.144 However, the addition of the word elements ‘núñez i navarro’ to the mark registered as the combination of the two letters ‘NN’ alters its distinctive character, since the additional word elements are dominating the two letters ‘NN’ by their size and explain their meaning. The interaction between the word elements ‘núñez i navarro’ and the initials thus forms an obstacle to the latter being perceived as a mark on its own.145 This situation must be distinguished from that in which the word mark is used jointly with other elements but autonomously, each sign being able to be perceived individually as a separate element of identification of a brand, sub-brand, company or trade name.146 Composite marks Where the word element is the most distinctive element of a composite mark, the use of that word alone does not alter the distinctive character of that mark in the form in which it was registered.147 An EU trade mark subject to an application for revocation is deemed to be distinctive, at least to some extent. The addition of the element ‘quality’ to the composite mark ‘Real’ and its stylization in the form of a label are negligible and do not alter the distinctive character of the mark, since the elements added have a lower distinctive character.148 Where the composite mark consists of a word and a figurative element which coincide in the conceptual content (the word element ‘Cactus’ and a stylized cactus), the use of the figurative element alone may not alter the distinctive character of the mark perceived as a whole.149 Figurative marks The distinctive character of a figurative mark consisting of the repeating pattern of salmon over a blue background is altered by its use as a mere ornamental background on the packaging of the goods. The interaction between the figurative mark and the word mark ‘Labeyrie’ which is superimposed on it has the effect of relegating the former to the status of a simple decorative element and prevents it from being perceived as a trade mark as such.150 Three-dimensional trade marks The weaker the distinctive character of a sign, the easier it will be to alter it by adding an element that is itself distinctive, and the more likely it is that the mark will lose its ability to be perceived as an indication of the origin of the good. The reverse proposition is also true. Thus, in the context of an application for revocation filed against a three-dimensional mark consisting of a particularly unusual shape of an oven, the General Court confirmed that the affixing of the word element ‘Bullerjan’ on the products did not alter the distinctive character of the shape mark. Due to its size and location on the oven, the word element was less striking than the shape of the good itself. There was no interaction between these elements of different types, each one remaining autonomous in respect of the other.151 The changes brought to secondary elements of a mark consisting of a shape of a pack of biscuits may not alter its distinctive character. In particular, the modification of a colour combination on the packaging was not held to be decisive since colours traditionally possess little inherent capacity for communicating specific information and are likely to be perceived as mere presentational features.152 Article 42 and 51 EUTMR: genuine use Starting point of the obligation of use In the context of opposition proceedings, the proprietor of an earlier mark may be requested to furnish proof that its mark has been put to genuine use during the period of five years preceding the date of publication of the contested mark (ex Article 42(2) and (3) of Regulation No 207/2009). As a result of the legal reform, the starting point of the obligation of use is now the date of filing or priority of the contested mark (Article 47(2) EUTMR). The fact that the earlier mark may become subject to the obligation of use during the proceedings is without impact on the starting point of this obligation. The trade mark applicant may file a revocation action against the earlier mark in order to protect himself from an opposition based on a mark which is liable to be revoked for non-use during the opposition proceedings.153 The allegation that the opponent fraudulently refiled identical trade marks without a genuine intention to use any of them has no bearing on the starting point of the obligation of use. The opponent’s bad faith at the time when the earlier mark was filed cannot be examined in opposition proceedings since it constitutes an absolute ground for invalidity.154 Use by a third party The trade mark proprietor’s consent to a use made by a third party cannot be presumed, but it can however be deduced from the proof of use. Use by a company which is part of the same group as the proprietor is implicitly made with the consent of that proprietor.155 Likewise, the payment of royalties by a third party to the proprietor amounts to proof of the latter’s consent to the use of its mark by the former.156 Public and external use Genuine use requires that the mark be used publicly and outwardly. The outward use of a mark can be shown by sales to intermediaries, even in respect of everyday consumer goods, without any direct sales to end consumers. The notion of genuine use cannot be interpreted as depriving trade marks of protection when used only in inter-corporate relations.157 Advertising made by the proprietor of the mark in order to promote its own financial services is a purely internal use which does not constitute an ‘independent activity’ in the field of advertising to which third parties might have recourse.158 Nature of the use An EU trade mark which is registered as an individual mark is not used in accordance with its essential function, which is to guarantee to consumers that the goods or services come from a single undertaking under the control of which they are manufactured or supplied, if it is used as a ‘label of quality’ certifying the composition or quality of the goods or services. The affixing of that mark may however constitute such genuine use if it guarantees, additionally and simultaneously, to consumers that those goods come from a single undertaking under the control of which the goods are manufactured and which is responsible for their quality.159 This seems unlikely where the mark at issue is used for the purpose of certifying the quality of the raw material of the goods, or the compliance with certain standards of business processes in the supply of a given service, rather than the quality of the finished product or of the overall service itself. Use of a mark in a descriptive context, such as the indication of the active substance of pharmaceuticals, is not a use as a trade mark. Neither the slight orthographic deviation of the mark from the term designating this active substance, nor the use of the symbol ‘®’ enables the recognition of a use as a mark.160 Genuine use without actual marketing The CJEU dismissed an appeal against a judgment by which the General Court ruled that the mere sale of goods bearing the EU trade mark, from a third country (Mexico) to an operator located in a Member State, does not establish genuine use in the EU, in absence of evidence that customs duties have been paid and that goods have been released for free circulation in Europe.161 Territorial scope of the use In a rather questionable judgment, the General Court ruled that genuine use was not substantiated in respect of an EU trade mark registered for doors since use was geographically limited to Italy. According to the General Court, the European market for doors does not have any ‘territorial specificity’ justifying that the use may be limited to the territory of a single Member State.162 The General Court considers that the ‘territoriality criterion’ is an autonomous requirement. This judgment departs from the case law of the CJEU following which ‘the territorial scope of the use is not a separate condition for genuine use but one of the factors determining genuine use, which must be included in the overall analysis and examined at the same time as other such factors’.163 The General Court also departed from its own case law since it held on several occasions that the use of an EU trade mark limited to Germany, Spain or the UK may be geographically sufficient to prove genuine use if the economic importance of the use, as well as its regularity, could compensate its limited geographical extent. In those previous cases, the goods for which the marks were registered did not have less of a ‘territorial specificity’ than doors.164 Importance of the use Even minimal use may be genuine. Invoices substantiating sales for an amount limited to €2,300 can support a finding of genuine use where these invoices serve an illustrative purpose, are addressed to several distributors and are corroborated by other evidence, such as press articles or catalogues. The fact that the invoices do not mention the mark is irrelevant provided that the goods mentioned on these invoices can be linked to the goods marketed under the contested mark. In these circumstances, ‘the provision of accounting documents setting out sales figures or invoices is not necessary for the purposes of establishing genuine use of the mark’.165 In general, the assessment of the extent of use should not rest exclusively on the actual amount of sales reflected by the invoices. A turnover stated in an annual report, the purchase of equipment required for the supply of the service, such as the purchase of cups bearing the mark for catering services, photographs of sales outlets or the regular updating of a Facebook page may be relevant inter alia where these elements are taken altogether. In such circumstances, ‘the lack of information on the market share held by the mark and on the turnover achieved with the goods and services in question is not capable of showing, in itself, that the use of the earlier trade mark in the economic sector concerned did not make it possible to maintain or create a market share for the goods or services protected by that mark’.166 A document detailing the sales volumes but having an uncertain source has limited evidential value. Genuine use may however be corroborated by the reference to a product bearing the mark in an encyclopaedia listing pharmaceutical products.167 Documentary evidence which is subsequent to the five-year period can be taken into consideration only if at least some other evidence relates to a use in during this period. If this is lacking, the order of a larger number of perfume bottles, after the relevant five-year period, cannot be taken into consideration when assessing the genuine use during this period.168 The reputation of the mark, acknowledged by a national judgment, does not in itself establish that this mark has been genuinely used. Both the objectives pursued by the protection of reputation and the relevant criteria to assess reputation differ from those governing the notion of genuine use.169 The evidential value of affidavits originating from a third party is not diminished by the existence of a contractual link between this party and the proprietor of the mark. Whether this third party is the sole importer and distributor of the proprietor in Europe is irrelevant, unless it is shown that the third party has a direct interest in the outcome of the action. An importer or a distributor does not have ‘close links’ with the proprietor of the mark to a comparable extent as the link existing between an employer and an employee, or an employee of a subsidiary, or an external service provider such as a consultant who are not truly independent.170 Use for the goods and services covered by the registration Where the mark designates specific goods or services one by one, genuine use must be demonstrated for each of these goods or services by separate evidence, unless those goods or services form a coherent and homogeneous category. This is the case for various data processing services, the different sub-categories of which are closely related.171 When a trade mark is used for a specific product within the broader category of products for which it is registered, the scope of protection is restricted to the separate subcategory to which this specific product belongs. This separate subcategory is defined by reference to the end purpose of the product. The use of a mark in respect of ‘household linen’, which forms a coherent and homogeneous sub-category for all textile products intended for domestic use, does not constitute a use of the general category of ‘textile goods’. In turn, ‘luxury clothing’ does not form an autonomous sub-category within the general category of ‘clothing’.172 In order to determine the sub-category to which a pharmaceutical product belongs, the therapeutic indication is the essential criterion. Therefore, ‘antitussive medicines’ constitute a sufficiently precise and coherent subcategory of ‘pharmaceuticals products’.173 Proper reasons for non-use The discontinuation of the use resulting from the non-compliance of the products with health standards is not a proper reason for non-use. The failure to comply with health standards is not as such a circumstance which is ‘unconnected’ with the trade mark proprietor, who was free to ensure the marketing conditions of his products. The proprietor who belatedly undertakes the necessary steps to bring his products up to standards does not behave with due diligence.174 More generally, the existence of regulations applicable in a certain field does not constitute a proper reason for non-use since they apply equally to all operators in the sector and thus do not have a sufficiently direct link with the use of a mark.175 Enforcement of and limitations to the exclusive right Jurisdiction and notion of establishment According to the first of the criteria governing the rules for the attribution of competence to national courts in respect of actions based on an EU trade mark, the action shall be brought in the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment (Article 125(1) EUTMR; ex Article 97(1) Regulation No 207/2009). A legally distinct company, with its seat in a Member State, which is a second-tier subsidiary of the undertaking whose seat is located outside of the EU, constitutes an ‘establishment’ if it is a centre of operations which has the appearance of permanency, ‘such as an extension of the parent body’. It is irrelevant whether such an establishment has legal personality. The court of the Member State of this establishment has jurisdiction to hear an action against the parent body, regardless of whether the establishment has participated in the alleged infringement.176 An EU trade mark court whose jurisdiction is based on the criterion of the establishment of the defendant has jurisdiction in respect of acts committed within the territory of any of the Member States (Article 126(1) EUTMR; ex Article 98(1) Regulation No 207/2009). International jurisdiction and co-defendants Where an infringement action, based on an unitary right such as a Community Design or an EUTM, is brought against two defendants, one of whom is domiciled in the Member State of the court seised of the action and the other in another Member State, the scope of jurisdiction of the court hearing the infringement action committed in the territory of any of the Member States extends to the co-defendant, pursuant to Article 8(1) of Regulation No 1215/2012 ‘Brussels I’ (formerly Article 6(1) Regulation No 44/2001). This international jurisdiction concerns not only the injunctions aimed at prohibiting the continuation of the infringement, but also accompanying measures such as corrective measures, for example recall from the channels of commerce or destruction or alternative measures such as the payment of pecunarity compensation.177 Jurisdiction and declaration of non-infringement of a unitary right Subject to the application of the ‘Brussels I’ Regulation (Regulation (EU) No 1215/2012 of 12 December 2012), actions for declaration of non-infringement are brought before the court of the defendant, provided that he has his registered office or is domiciled or has an establishment in a Member State. The exception rule allowing the claimant to bring the action before in the courts of the Member State in which the act of infringement has been committed or threatened cannot be applied to actions for declaration of non-infringement (Article 125(5) EUTMR; ex Article 97(5) Regulation 207/2009). The court having jurisdiction to rule on the entirety of a dispute concerning both a declaration of non-infringement and related actions such as unfair competition is that of the defendant, unless this defendant accepts a prorogation of jurisdiction within the meaning of Articles 25 and 26 of ‘Brussels I’.178 Coexistence and unitary effect An EU trade mark produces its effect throughout the entire area of the Union. Peaceful coexistence with an EUTM may diminish or rule out any harm to its essential functions, but this is not an ‘effect’ of the unitary protection. The consequences of a peaceful coexistence limited to one or several Member States can therefore not be presumed to extend to the entire territory of the EU. The absence of any prejudice caused to the essential functions of the EUTM ‘Kerrygold’, resulting from its peaceful coexistence with the mark ‘Kerrymaid’ in Ireland and in the United Kingdom, does not constitute, in itself, an obstacle to a request for an injunction to prohibit the use of this mark in Spain. The coexistence remains, however, a relevant element in the overall assessment of likelihood of confusion and of the notion of ‘due cause’ which may justify the use of a later sign identical or similar to an earlier mark with a reputation. The CJEU noted that, in the case at hand, the coexistence was mainly the result of the common element ‘Kerry’ being descriptive, in the perception of both the Irish and British public, of the geographical origin of dairy products from Ireland. With regards to Spain, the existence of a link between the geographic name ‘Kerry’ and dairy products may be established (and ‘due cause’ allowing the use of the later mark ‘Kerrymaid’ may consequently be substantiated) if it is shown that ‘the market conditions and the sociocultural circumstances’ do not vary significantly between Ireland and United Kingdom, on the one hand, and Spain, on the other.179 Lis pendens and territorial scope of action for prohibition of use Where actions for infringement between the same parties and involving the ‘same cause of action’ are brought before the courts of different Member States, one seised on the basis of an EU trade mark and the other seised on the basis of an identical national trade mark, the court second seised shall of its own motion decline jurisdiction in favour of the court first seised (Article 136 EUMTR; Article 109 Regulation No 207/2009). The notion of ‘same cause of action’ within the meaning of Article 136 EUTMR must be interpreted as requiring a total overlap regarding not only the alleged acts of infringement, but also the subject matter and the cause of the two actions brought simultaneously on the basis of a national mark and of an EU trade mark. The identity of the ‘subject matter’ of the two actions that is, the end which these actions have in view, requires an identity of the claims put forward in each of the sets of proceedings, including in terms of the territorial scope of the two requests for prohibition of use. Thus, where two actions for infringement between the same parties are brought, the first one on the basis of a national mark, seeking a prohibition of use in the UK, and the second one on the basis of an EU trade mark, seeking a prohibition of use in the entire territory of the EU, the court second seised must decline jurisdiction only in respect of the part of the dispute relating to the territory of the UK.180 Counterclaim for a declaration of invalidity and action for infringement Where a national court is seised both of an action for infringement of an EUTM and a counterclaim for a declaration of invalidity, the action for infringement cannot be dismissed on account of the existence of an absolute ground for invalidity without that court having beforehand upheld the counterclaim. The court may however rule on both actions in the same decision, regardless of the fact that the decision on the counterclaim for a declaration of invalidity has not become final.181 Actions for recovery of ownership The EUTMR expressly provides the possibility to request the transfer of a trademark registered in violation of the right of the legitimate proprietor only where the mark was registered in the name of the agent or representative of the proprietor. The legitimate proprietor may request in a counterclaim submitted before an EU trade mark court, the assignment of the EUTM in his favour instead of a declaration of nullity, or, since the legal reform, directly to the EUIPO (Article 21 EUTMR; ex Article 18 Regulation No 207/2009). Where the third party who applied for the registration of a mark in his name is neither an agent nor a representative of the legitimate proprietor, this provision specific to EU trade marks is not applicable. However, the national legislation dealing with recovery of ownership of national marks applies by analogy to EU trade marks in all situations not expressly covered by the EUTMR. The national court to be seised is determined according to the jurisdiction rule set out in Article 19 EUTMR.182 Law applicable to corrective measures and damages Article 8(2) of Regulation (EC) No 864/2007 of the European Parliament and of the Council of 11 July 2007 on the law applicable to non-contractual obligations (‘Rome II’) must be interpreted as meaning that the ‘country in which the act of infringement was committed’ refers to the country where the event giving rise to the damage occurred. Where the damage results from the display of an offer for sale of infringing goods on internet, the place where the event giving rise to the damage occurred is the place where the process of putting the offer for sale online on the website was activated.183 Footnotes 1 Now Article 120(2)(b) EUTMR. 2 Rosenich v EUIPO, T-527/14, ECLI:EU:T:2017:487, paras 64–73 and 80–3 (Paul Rosenich). 3 Rule 15(1) of Regulation No 2868/95, now Article 2(1) EUTMDR. 4 JT v EUIPO, T-249/15, ECLI:EU:T:2017:885, paras 46–50 (Quilapayun). 5 Article 17(7) of Regulation No 207/2009, now Article 20(12) EUTMR. 6 QuaMa Quality Management v EUIPO, T-225/15, ECLI:EU:T:2017:10, paras 29–42 (medialbo / MediaLB). 7 Biernacka-Hoba v EUIPO, T-23/16, ECLI:EU:T:2017:149, paras 21–30 (Formata / Formata). 8 Rule 98(1) of Regulation 2868/95, now Article 25(1) EUTMIR. 9 Mediexpert v EUIPO, T-780/16, ECLI:EU:T:2017:538, paras 34–51 (mediaexpert (fig.) / mediaexpert). 10 Rule 20(7) of Regulation No 2868/95, now Article 71 EUTMDR. 11 Uniliver v EUIPO, T-811/14, ECLI:EU:T:2017:98, paras 61–7 (Fair & Lovely (fig.) / New York Fair & Lovely). 12 Jordi Nogues v EUIPO, T-386/15, ECLI:EU:T:2017:632, paras 25–33 (Badtoro / Toro). 13 Kessel medintim v EUIPO, T-509/15, ECLI:EU:T:2017:60, paras 32–3 (Premeno / Pramino); Capella v EUIPO, T-473/15, ECLI:EU:T:2017:174, paras 36–9 and 60–65 (Apus / Abus). 14 Fair & Lovely (fig.) / New York Fair & Lovely, T-811/14, above, n 11, paras 29–37 and 40–2; Gómez Echevarría v EUIPO, T-19/15, ECLI:EU:T:2017:46, paras 20–2 and 29–30 (Wax by Yuli’s / Wax). 15 Forest Pharma v EUIPO, T-36/17, ECLI:EU:T:2017:690, paras 24–5 (Colineb / Colina); see now Article 27(3) EUTMDR. 16 Falegnameria Universo dei F.lli Priarollo v EUIPO, T-386/16, ECLI:EU:T:2017:706, paras 31–5 (Silente Porte & Porte). 17 Now Article 68(2) EUTMR. 18 Article 68(2) EUTMR. 19 Gappol Marzena Porczyńska v EUIPO, T-411/15, ECLI:EU:T:2017:689, paras 30–6 (Gappol / Gap). 20 Haw Par v EUIPO, T-25/16, ECLI:EU:T:2017:303, paras 34–45 (GelenkGold (fig.) / shape of a tiger). 21 Antrax It v EUIPO, T-828/14 and T-829/14, ECLI:EU:T:2017:87, paras 88–94 (shape of a heater). 22 GelenkGold (fig.) / shape of a tiger, T-25/16, above, n 20, paras 70–3 and 77–92. 23 Gappol / Gap, T-411/15, above, n 19, paras 57 and 76. 24 NRJ Group v EUIPO, T-184/16, ECLI:EU:T:2017:703, paras 44–8 and 90–1 (Sky Energy / NRJ). Contra: Nanu-Nana Joachim Hoepp v EUIPO, T-39/16, ECLI:EU:T:2017:263, paras 32–9 (Nana Fink / Nana). 25 Colineb / Colina, T-36/17, above, n 15, paras 35–6. 26 Novartis v EUIPO, T-214/15, ECLI:EU:T:2017:637, paras 109–10 (Zymara / Femara). 27 19.69 Abbigliamento Sportivo v EUIPO, T-336/16, ECLI:EU:T:2017:691, paras 29–35 (Versace 19.69 / Versace). 28 Comercializadora Eloro v EUIPO, C-71/16 P,) ECLI:EU:C:2017:345, paras 63–5 (ZuMEX (fig.) / Jumex. 29 Kasztantowicz v EUIPO, T-97/16, ECLI:EU:T:2017:298, paras 30–2 (Geotek). 30 Cofra v EUIPO, T-233/15, ECLI:EU:T:2017:714, paras 29–37 (1841 / AD-1841-TY). 31 Moravia Consulting v EUIPO, T-316/16, ECLI:EU:T:2017:717, paras 52–72 (SDC-554S / SDC-554S). 32 Shape of a heater, T-828/14 and T-829/14, above, n 21, paras 30–3. 33 International Gaming Projects v EUIPO, T-82/16, ECLI:EU:T:2017:66, paras 18–19 and 49–52 (Triple Evolution / Evolution). 34 Windrush Aka v EUIPO, T-336/15, ECLI:EU:T:2017:197, paras 12–13 (The Specials). 35 Red Bull v EUIPO, T-101/15 and T-102/15, ECLI:EU:T:2017:852, paras 57–71 (Blue and Silver). 36 Flamagas v EUIPO, T-580/15, (shape of a lighter with word device ‘clipper’ (3D)) ECLI:EU:T:2017:433, para 35; Enercon v EUIPO, T-36/16, ECLI:EU:T:2017:295, paras 36–40 (green stripes on a pin (col.)). 37 Green stripes on a pin (col.), T-36/16, above, n 36, para 51. 38 Coesia v EUIPO, T-130/16, ECLI:EU:T:2017:44, paras 20–5 (representation of two oblique curves). 39 Waldhausen v EUIPO, T-717/16, ECLI:EU:T:2017:667, para 24 (Pferdekopf). 40 August Storck v EUIPO, C-417/16 P, ECLI:EU:C:2017:340, paras 35–40 (device of a square-shaped packaging). 41 Simba Toys GmbH & Co. KG v EUIPO, C-30/15 P, ECLI:EU:C:2016:849, paras 43–52 (Three-dimensional mark in the shape of a cube with surfaces having a grid structure). 42 M/S. Indeutsch International v EUIPO, T-20/16, ECLI:EU:T:2017:410, paras 27, 35 and 40–7 (Device of a repeated geometric design). 43 Shape of a lighter with word device ‘clipper’ (3D), T-580/15, above, n 36, paras 73–5 and 78–81. 44 Pirelli Tyre v EUIPO, T-81/16, ECLI:EU:T:2017:463, para 24 (pair of curved strips on the side of a tyre (posit.)). 45 Lackmann Fleisch- und Feinkostfabrik v EUIPO, T-432/16, ECLI:EU:T:2017:527, paras 25–31, 37–9 and 43 (ме∂ве´∂ь). 46  InvoiceAuction B2B v EUIPO, T-789/16, ECLI:EU:T:2017:638, paras 36–8 and 44 (Invoice Auction); Wieromiejczyk v EUIPO, T-64/16, ECLI:EU:T:2017:13, paras 24–6 (Tasty Puff); Klassisk investment v EUIPO, T-194/16, ECLI:EU:T:2017:498, paras 30–2 (classic fine foods). 47 LG Electronics v EUIPO, T-659/16, ECLI:EU:T:2017:387, paras 28–30 (Second Display). 48 Yoshida Metal Industry v EUIPO, C-421/15 P, ECLI:EU:C:2017:360, paras 30 and 35 (surface covered with circles). 49 Shape of a lighter with word device ‘clipper’ (3D), T-580/15, above, n 36, paras 34–40 and 47–51. 50 Municipality of Oslo v Patentstyret, EFTA Court, Case E-5/16, paras 92–3. 51 Osho Lotus Commune v EUIPO, T-670/15, ECLI:EU:T:2017:716, paras 107–11 (Osho). 52 Alpirsbacher Klosterbräu Glauner v EUIPO, T-844/16, ECLI:EU:T:2017:759, paras 44–5 (Klosterstoff). 53 Aldi Einkauf GmbH & Co. OHG v EUIPO, T-327/16, ECLI:EU:T:2017:439, paras 49–51 (Antico Casale) 54 Bodegas Vega Sicilia v EUIPO, T-696/15, ECLI:EU:T:2017:69, paras 44–55 and 59–60 (Tempos Vega Sicilia). 55 Bodegas Verdúguez v EUIPO, T-206/16, ECLI:EU:T:2017:673, paras 64–5 (Tres Toros 3). 56 Mengozzi v EUIPO, T-510/15, ECLI:EU:T:2017:54, paras 39–45 (Toscoro). 57 Bet365 Group Ltd v Euipo, T-304/16, ECLI:EU:T:2017:912, paras 26 and 35 (bet365). 58 Bet365, T-304/16, above, n 57, paras 41–8 and 66–7. 59 Bet365, T-304/16, above, n 57, paras 50–2. 60 Pair of curved strips on the side of a tyre, T-81/16, above, n 44, paras 79–81. 61 Ecolab USA v EUIPO, T-150/16, ECLI:EU:T:2017:490, para 53 (Ecolab). 62 PayPal v EUIPO, T-132/16, ECLI:EU:T:2017:316, paras 52–65 (Venmo). 63 Airhole Facemasks v EUIPO, T-107/16, ECLI:EU:T:2017:335, paras 28 and 41 (Air hole face masks you idiot). 64 Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, T-687/16, ECLI:EU:T:2017:853, paras 39–45 (Stylo & Koton). 65 Chartered Institute of Patent Attorneys v Registrar of Trade Marks, C-307/10, ECLI:EU:C:2012:361. 66 Brandconcern BV v EUIPO, C-577/14 P, ECLI:EU:C:2017:122, paras 29–30; see also, regarding a national earlier mark, Arrigoni v EUIPO, T-454/16, ECLI:EU:T:2017:646, paras 47–8 (Arrigoni Valtaleggio / Arrigoni). 67 Praktiker Bau- und Heimwerkermärkte AG, C-418/02, ECLI:EU:C:2005:425, paras 50–1. 68 EUIPO v Cactus, C-501/15 P, ECLI:EU:C:2017:750, paras 38–48 (Cactus of peace / Cactus). 69 Apax Partners UK v EUIPO, T-209/16, ECLI:EU:T:2017:240, paras 29–39 (Apax Partners). 70 Nana Fink / Nana, T-39/16, above, n 24, paras 46–9. 71 Tulliallan Burlington Ltd v EUIPO, T-120/16, ECLI:EU:T:2017:873, paras 70–2 (Burlington / Burlington Arcade). 72 The Tea Board v EUIPO, C-673/15 P and C-676/15 P, ECLI:EU:C:2017:702, paras 49–65 (Darjeeling / Darjeeling). 73 Axel Springer v EUIPO, T-359/16, ECLI:EU:T:2017:477, para 29 (TestBild / test); Fakro v EUIPO, T-457/15, ECLI:EU:T:2017:391, para 46 (climaVera / Climaver Decor). 74 Opko Ireland Global Holdings v EUIPO, T-88/16, ECLI:EU:T:2017:32, paras 48–58 (Alpharen / Alpha D3). 75 AW v EUIPO, T-85/15, ECLI:EU:T:2017:336, para 31 (Yoelis / Yondelis). 76 Leopard v EUIPO, T-7/15, ECLI:EU:T:2017:731, paras 38–40 and 45–7 (Leopard true racing / Leopard Casa y jardin). 77 Alpharen / Alpha D3, T-88/16, above, n 74, paras 79–82; Premeno / Pramino, T-509/15, above, n 13, paras 51–5. 78 Zymara / Femara, T-214/15, above, n 26, paras 64–70; and Rath v EUIPO, T-258/08, ECLI:EU:T:2017:22, para 52 (Diacor / Diacol). 79 Panrico v EUIPO, C-655/15 P, ECLI:EU:C:2017:155, paras 73–7 (Krispy Kreme Doughnuts / Donut). 80 climaVera / Climaver Decor, T-457/15, above, n 73, paras 41–3. 81 Nana Fink / Nana, T-39/16, ECLI:EU:T:2017:263, above, n 24, paras 85–9. 82 TestBild / test, T-359/16, above, n 73, paras 32–7. 83 Certified Angus Beef v EUIPO, T-55/15, ECLI:EU:T:2017:499, paras 20–2 and 24–27 (Certified Australian Angus beef / Since 1978 Certified Australian Angus beef Brand). 84 Triple Evolution / Evolution, T-82/16, above, n 33, para 53. 85 Oakley v EUIPO, T-754/16, ECLI:EU:T:2017:786, paras 52–3 (CC / O); Wolf Oil v EUIPO, C-437/16 P, ECLI:EU:C:2017:737, para 56 (Chempioil / Champion). 86 Sensi Vigne & Vini v EUIPO, T-434/16, ECLI:EU:T:2017:721, para 49 (Contado del grifo / El grifo). 87 Triple Evolution / Evolution, T-82/16, above, n 33, paras 37–8. 88 Jordi Nogues v EUIPO, T-350/13, ECLI:EU:T:2017:633, paras 30–1 (Badtoro (fig.) / Toro). 89 Asna v EUIPO, T-382/16, ECLI:EU:T:2017:713, paras 71–4 (Asna Wings / Wings); Aldi v EUIPO, T-736/15, ECLI:EU:T:2017:729, para 91 (Skylite / Sky). 90 1841 / AD-1841-TY, T-233/15, above, n 30, para 93. 91 Deutsche Post v EUIPO, T-13/15, ECLI:EU:T:2017:434, paras 40–52 and 68 (PostModern / Deutsche Post). 92 Environmental Manufacturing v EUIPO, T-681/15, ECLI:EU:T:2017:296, paras 53–4 (Representation of a wolf’s head / Wolf Jardin). 93 GelenkGold (fig.) / shape of a tiger, T-25/16, above, n 20, paras 35–45. 94 Chempioil / Champion, C-437/16 P, above, n 85, paras 46–7. 95 Zero v EUIPO, T-106/16, ECLI:EU:T:2017:67, paras 54–5 (Ziro / Zero). 96 Mundipharma v EUIPO, T-144/16, ECLI:EU:T:2017:783, paras 55–69 (Multipharma / Mundipharma); Azanta v EUIPO, T-49/16, ECLI:EU:T:2017:259, paras 53–5 (Nimoral / Neoral). 97 climaVera / Climaver Decor, T-457/15, above, n 73, para 78; Dogg Label v EUIPO, T-406/16, ECLI:EU:T:2017:482, paras 73–5 (Japrag / Japanrag); Migros-Genossenschafts-Bund v EUIPO, T-189/16, ECLI:EU:T:2017:488, paras 72–4 (Cremespresso / Cremesso). 98 Diesel v EUIPO, T-521/15, ECLI:EU:T:2017:536, paras 54–5 and 68–70 (D / D). 99 Versace 19.69 / Versace, T-336/16, above, n 27, paras 92–4. 100 Codorníu v EUIPO, T-86/16, ECLI:EU:T:2017:627, paras 61–2 (Ana de Altun / Anna). 101 Pempe v EUIPO, T-271/16, ECLI:EU:T:2017:787, paras 48–52, 78–80 and 101 (Thomas Marshall / Marshall). 102 Vignerons de la Méditerranée v EUIPO, T-216/16, ECLI:EU:T:2017:201, para 100 (Le Val / Viña del Val). 103 Sky Energy / NRJ, T-184/16, above, n 24, paras 92–5. 104 Sky Energy / NRJ, T-184/16, above, n 24, para 97. 105 PostModern / Deutsche Post, T-13/15, above, n 91, paras 40–52. 106 Aydin v EUIPO, T-95/16, ECLI:EU:T:2017:388, paras 70–5 (Royal & Caporal / Kaporal); Nestlé v OHMI, T-5/08 and T-7/08, para 60 (Golden Eagle & Golden Eagle Deluxe). 107 Badtoro (fig.) / Toro, T-386/15, above, n 12, para 58. 108 Mediterranean Premium Spirits v EUIPO, T-258/16, ECLI:EU:T:2017:375, para 65 (Ginraw / Raw). 109 Badtoro (fig.) / Toro, T-350/13, above, n 88, para 39. 110 Multipharma / Mundipharma, T-144/16, above, n 96, para 42. 111 Tetra Pharm (1997) v EUIPO, T-441/16, paras 50–2 and 76 (SeboCalm / Sebotherm). 112 Continental Reifen Deutschland v EUIPO, C-84/16 P, ECLI:EU:C:2017:596, paras 100–1 (XKing / X). 113 Sky Energy / NRJ, T-184/16, above, n 24, paras 64–5. 114 Frinsa del Noroeste v EUIPO, T-634/15, ECLI:EU:T:2017:484, paras 74–5 (Frinsa La conservera / Friusa). 115 Morgan & Morgan v EUIPO, T-399/15, ECLI:EU:T:2017:17, paras 66–8 (M&M Morgan & Morgan / MMG trust Miembro del Grupo Morgan & Morgan). 116 Frinsa La conservera / Friusa, T-634/15, above, n 114, paras 78–80. 117 Hello Media Group v EUIPO, T-331/16, ECLI:EU:T:2017:760, paras 41–2 (hello media group (fig.) / Hello!). 118 AIA v EUIPO, T-389/16, ECLI:EU:T:2017:492, paras 39–45 and 49 (Montorsi F. & F. / Casa Montorsi). 119 PostModern / Deutsche Post, T-13/15, above, n 91, paras 72–4. 120 GelenkGold (fig.) / shape of a tiger, T-25/16, above, n 20, paras 77–92. 121 Stock Polska v EUIPO, T-701/15, ECLI:EU:T:2017:16, para 44 (Lubelska / Lubeca). 122 Anton Riemerschmid Weinbrennerei und Likörfabrik v EUIPO, T-187/16, ECLI:EU:T:2017:30, para 35 (Litu / Pitu). 123 Keturi kambariai v EUIPO, T-202/16, ECLI:EU:T:2017:750, para 138 (coffee inn (fig.) / coffee in). 124 M&M Morgan & Morgan / MMG trust Miembro del Grupo Morgan & Morgan, T-399/15, above, n 115, para 63. 125 Coffee inn (fig.) / coffee in, T-202/16, above, n 123, paras 143–4. 126 Ellinikos Syndesmos Epicheiriseon gia ti Diacheirisi ton Diethnon Protypon GS1 v EUIPO, T-453/16, ECLI:EU:T:2017:685, paras 33–9, 64–7 and 79–86 (520 Barcode Hellas). 127 Repsol YPF v EUIPO, T-609/15, ECLI:EU:T:2017:640, paras 48, 60–1 and 67 (Basic). 128 Tamasu Butterfly Europa v EUIPO, T-315/16, ECLI:EU:T:2017:629, paras 90–7 (Butterfly / Butterfly). 129 EUIPO v Szajner, C-598/14 P, ECLI:EU:C:2017:265, paras 40–5 and 56 (Laguiole). 130 Alma-The Soul of Italian Wine v EUIPO, T-637/15, ECLI:EU:T:2017:371, para 47 (Sotto il Sole / Viña Sol). 131 Gappol / Gap, T-411/15, above, n 19, paras 163–72. 132 Butterfly / Butterfly, T-315/16, above, n 128, paras 54–5. 133 CC / O, T-754/16, above, n 85, para 110. 134 Celine, C-17/06, ECLI:EU:C:2007:497, para 23. 135 Butterfly / Butterfly, T-315/16, above, n 128, para 73. 136 PAGO International GmbH v Tirolmilch registrierte Genossenschaft mbH, C-301/07, ECLI:EU:C:2009:611, paras 27–30. 137 Gappol / Gap, T-411/15, above, n 19, para 173. 138 Sotto il Sole / Viña Sol, T-637/15, above, n 130, paras 61–3 and 76–8. 139 Gappol / Gap, T-411/15, above, n 19, paras 191–202. 140 The Coca-Cola Company v EUIPO, T-61/16, ECLI:EU:T:2017:877, paras 77–8, 86–9, 94–105 (Master / Coca-Cola). 141 Groupe Léa Nature v EUIPO, T-341/13 RENV, ECLI:EU:T:2017:381, para 91 (So’bio etic / So…?). 142 Burlington / Burlington Arcade, T-120/16, above, n 71, para 45. 143 Arrigo Cipriani v EUIPO, T-343/14, ECLI:EU:T:2017:458, paras 98–106 (Cipriani / Cipriani). 144 1841 / AD-1841-TY, T-233/15, above, n 30, paras 73–5. 145 Josel v EUIPO, T-333/15, ECLI:EU:T:2017:444, paras 38–46 (NN / NN). 146 Savant Systems v EUIPO, T-110/16, ECLI:EU:T:2017:521, paras 29–35 (Savant). 147 Diacor / Diacol, T-258/08, above, n 78, para 38. 148 Tayto Group v EUIPO, T-287/15, ECLI:EU:T:2017:443, paras 30–4 (Real,-). 149 Cactus of peace / Cactus, C-501/15 P, above, n 68, paras 69–70. 150 Labeyrie v EUIPO, T-766/15, ECLI:EU:T:2017:123, paras 33 and 51–60 (pattern of salmons). 151 Klement v EUIPO, T-211/14 RENV, ECLI:EU:T:2017:715, paras 42–7 (shape of an oven). 152 Galletas Gullón v EUIPO, T-418/16, ECLI:EU:T:2017:746, paras 31–3 (shape of a packet of biscuits). 153 Thomas Marshall / Marshall, T-271/16, above, n 101, paras 21–2. 154 Skylite / Sky, T-736/15, above, n 89, paras 21–8 and 35. 155 Real,-, T-287/15, above, n 148, paras 56–60. 156 The Specials, T-336/15, above, n 34, paras 37 and 55–8. 157 M. I. Industries, Inc. v EUIPO, T-30/16, ECLI:EU:T:2017:77, paras 54–9 (Natural Instinct / Nature’s variety); Shape of a packet of biscuits, T-418/16, above, n 152, paras 61–3. 158 Intesa Sanpaolo SpA v EUIPO, T-143/16, ECLI:EU:T:2017:687, paras 30–3, 52–3 and 58–9 (Intesa). 159 W. F. Gözze Frottierweberei GmbH, C-689/15, ECLI:EU:C:2017:434, paras 45–50. 160 Georgios Pandalis v EUIPO, T-15/16, ECLI:EU:T:2017:75, paras 42–6 (Cystus). 161 ZuMEX (fig.) / Jumex, C-71/16 P, above, n 28, paras 33–9. 162 Silente Porte & Porte, T-386/16, above, n 16, paras 46–53. 163 Leno Merken, C-149/11, ECLI:EU:C:2012:816, paras 30 and 36. 164 Real,-, T-287/15, above, n 148, para 59; Juan Gallardo Blanco v EUIPO, T-716/15, ECLI:EU:T:2016:649, paras 41–4 (H / H); K&K Group AG v EUIPO, T-2/16, ECLI:EU:T:2016:690, para 50 (Pret a diner / Pret a manger); TVR Automotive Ltd v OHMI, T-398/13, ECLI:EU:T:2015:503, para 57 (TVR Italia / TVR); Now Wireless Ltd v OHMI, T-278/13, ECLI:EU:T:2015:57, paras 52–3 (Now). 165 Shape of a packet of biscuits, T-418/16, above, n 152, paras 49–60. 166 Coffee inn (fig.) / coffee in, T-202/16, above, n 123, paras 39–44 and 54–62; Asna Wings / Wings, T-382/16, above, n 89, paras 39–42. 167 Diacor / Diacol, T-258/08, above, n 78, paras 39–42. 168 Isabel Martín Osete v EUIPO, T-427/16, ECLI:EU:T:2017:455, paras 40–1 (An ideal wife). 169 Intesa, T-143/16, above, n 158, paras 44–7. 170 Natural Instinct / Nature’s variety, T-30/16, above, n 157, paras 42–7. 171 Savant, T-110/16, above, n 146, para 66. 172 Versace 19.69 / Versace, T-336/16, above, n 27, paras 49–52 and 57–8. 173 Diacor / Diacol, T-258/08, above, n 78, para 36. 174 Kaane American International Tobacco Company FZE v EUIPO, T-294/16, ECLI:EU:T:2017:382, paras 42–8 (Gold Mount). 175 An ideal wife, T-427/16, above, n 168, paras 51–3. 176 Hummel Holding A/S / Nike Inc. and others, C-617/15, ECLI:EU:C:2017:390, paras 34–40. 177 Nintendo, C-24/16 and C-25/16, ECLI:EU:C:2017:724, paras 49, 55–64. 178 Bayerische Motoren Werke AG, C-433/16, ECLI:EU:C:2017:550, paras 47–50. 179 Ornua Co-operative Ltd v Tindale & Stanton Ltd España SL, C-93/16, ECLI:EU:C:2017:571, paras 56–60. 180 Merck KGaA v Merck & Co. Inc and others, C-231/16, ECLI:EU:C:2017:771, paras 48–53. 181 Hansruedi Raimund, C-425/16, ECLI:EU:C:2017:776, paras 37–46. 182 M. Benjumea, C-381/16, ECLI:EU:C:2017:889, paras 34–8. 183 Nintendo, C-24/16 and C-25/16, above, n 177, paras 95–8 and 107–8; see, for corrective measures, DHL Express France, C-235/09, ECLI:EU:C:2011:238, paras 54–6. © The Author(s) 2018. Published by Oxford University Press. All rights reserved. This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic.oup.com/journals/pages/about_us/legal/notices)
TI - European Union trade mark round-up 2017
JF - Journal of Intellectual Property Law & Practice
DO - 10.1093/jiplp/jpy039
DA - 2018-05-01
UR - https://www.deepdyve.com/lp/oxford-university-press/european-union-trade-mark-round-up-2017-9y14BdqsAl
SP - 357
EP - 376
VL - 13
IS - 5
DP - DeepDyve
ER -