TY - JOUR
AU - Goh,, Benjamin
AB - Second Board of Appeal of the European Union Intellectual Property Office, Case R 1221/2019-2, Boss shot/Boss, 4 May 2020 By a decision of 4 May 2020, the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) dismissed an appeal against a 2019 decision of the EUIPO Opposition Division concerning an opposition action based on an earlier trade mark’s reputation. Legal context When a party applies to oppose the registration of a European Union trade mark (EUTM) based on their earlier reputed trade mark, Article 8(5) of the European Trade Mark Regulation 2017/1001 (EUTMR) sets out the requirements for a successful opposition. First, the earlier EUTM must have a reputation in the European Union (EU). Secondly, the contested sign must be identical or similar to the party’s earlier EUTM—there must be a ‘link’ such that the later mark would call the earlier mark to mind in the relevant public (Case C-252/07, Intel Corporation EU:C:2008:655, paragraphs 57 and 58). Thirdly, the registration of the contested sign would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark by reference to the relevant public. Lastly, there must be no due cause justifying the use of the contested sign. Facts In August 2017, Boss Shot Ltd (‘the applicant’) applied to register the word mark ‘BOSS SHOT’ as an EUTM for ‘food flavourings’ in Class 30 and ‘electronic cigarettes’ in Class 34 of the Nice Classification. HUGO BOSS Trade Mark Management GmbH & Co. KG (‘the opponent’) opposed this application on the basis of its earlier EU word mark ‘BOSS’ for ‘precious metals, jewellery, clocks, and watches’ in Class 14 and ‘clothing, accessories, and shoes’ in Class 25. In April 2019, the European Union Intellectual Property Office (EUIPO) Opposition Division rejected the opposition. Though it was established that the opponent’s EUTM enjoyed a ‘certain degree of recognition’ for goods in Class 25, the goods covered by the applicants’ and opponents’ EUTMs were so different that the mark was unlikely to bring the earlier mark to the mind of the relevant public. The opponent filed an appeal to the Second Board of Appeal of the EUIPO (‘the Board’). Analysis The Board began by stating the four conditions for Article 8(5) EUTMR to apply, and reinforcing that the conditions are cumulative (25 May 2005, Case T-67/04, Spa-Finders, EU:T:2005:179, paragraph 30). (1) Reputation The Board agreed with the findings of the Opposition Division that the opponent’s EUTM had acquired a reputation for ‘clothing for men and women and children’ in Class 25 within the EU. The issue was whether the opponent’s mark’s reputation was to a ‘very high’ degree for Class 25 and also reputed for goods in Class 14 as the opponent claimed, or was non-existent—or at best to a low degree for Classes 14 and 25—as the applicant instead claimed. Having analysed evidence adduced by the opponent (sales figures, marketing expenditure and sponsorships), the Board concluded that the opponent’s mark enjoyed a ‘high degree’ of recognition for ‘clothing for men and women and children’ in Class 25, but not for Class 14 goods. (2) Similarity and link To identify a ‘link’ between a contested and earlier sign, the Court of Justice of the European Union (CJEU) has suggested a multifactor approach, which the Board endorsed (Case C-252/07, Intel Corporation EU:C:2008:655, paragraph 42). These factors include: the degree of similarity between the signs; the nature of the goods or services for which the signs at issue are registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; the strength of the earlier mark; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the public. The Board upheld the Opposition Division’s finding that the signs were similar to an average degree, considering their visual, aural, phonetic and conceptual similarity alike. They also noted that the opponent’s mark’s degree of inherent distinctiveness was normal. Regarding the contested goods (food flavourings in Class 30 and electronic cigarettes in Class 34), the Board held that they were not only dissimilar from the opponent’s goods, but were not connected in any way by any relevant points of contact. The Board then held that, though Article 8(5) is applicable where goods or services are dissimilar, there is still an interplay of factors: the less similar goods or services are, the more similar the marks or stronger the reputation has to be to find a link. Here, the contested goods had different natures, purposes, methods of use, origins and distribution channels, such that it was not reasonable for the average consumer to assume that a fashion producer would sell food flavourings, or the highly regulated electronic cigarettes. Therefore, a link between the marks used in relation to the relevant goods could not be established. (3) Unfair advantage and detriment The Board noted that the ‘relevant public’ is different when assessing unfair advantage and detriment. Unfair advantage is assessed with reference to the perception of the average consumer of the goods for which the contested mark is registered, and detriment is assessed by reference to average consumers of the goods and services for which the earlier mark is registered (Case C-252/07, Intel Corporation EU:C:2008:655, paragraphs 35 and 36). The Board found that the goods covered by the contested and earlier marks were so far apart from each other that the target public for the goods in Classes 30 and 34 would not make a link to the completely different world of fashion clothing if they were to encounter the contested mark when using or purchasing the contested goods in Classes 30 and 34, and vice versa. Therefore, the Board concluded that it was inconceivable that the use of ‘BOSS SHOT’ would take unfair advantage of the earlier EUTM, and that there was no likelihood of detriment to distinctive character or repute. The Board considered it possible for a mark with an exceptionally high degree of reputation that the probability of a future, non-hypothetical risk of detriment to the earlier mark or of unfair advantage being taken of it by the mark applied for is so obvious that the opposing party does not need to put forward and prove any other fact to that end. However, the Board held that it will not be presumed that such will always be the case, and it was not the case in this instance. (4) Due cause Having held that the necessary condition for opposition under Article 8(5) of finding unfair advantage or detriment was not fulfilled, the Board did not deliberate the issue of whether there was due cause to use the contested sign. Practical significance This decision clarifies that the link requirement is necessary for an Article 8(5) opposition action to succeed. Also, when assessing whether there is a risk of unfair advantage or detriment, whether the relevant public would link the goods and/or services covered by the marks is relevant at this stage. This would mean that where the goods and/or services covered are dissimilar, an opposition action is more likely to fail, either at the link or risk of unfair advantage or detriment stage. This decision also raises the possibility of Article 8(5) applying where a mark has an exceptionally high degree of reputation such that the goods or services covered by the marks may be dissimilar; the opposing party does not need to adduce any evidence of a risk of unfair advantage taken or detriment to their EUTM. Previously, the CJEU suggested that a strong reputation of an earlier mark would lead to a high level of protection; the reputation of a mark for a stock exchange was found to extend beyond the professional public specializing in financial information, such that Article 8(5) was successfully used to oppose the application of a mark for sports equipment (Case C-320/07 P, Antartica Srl, EU:C:2009:146, paragraph 49). It is now clear that, even the most well-reputed marks, such as those owned by Hugo Boss who spend millions of Euros on advertising and are widely recognized by consumers in the EU, are not limitlessly protected vis-á-vis similar marks used on different products. © The Author(s) 2020. 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/open_access/funder_policies/chorus/standard_publication_model)
TI - Reputation alone is not enough: EUIPO BoA confirms that a ‘link’ is needed to rely on the extended protection available to trade marks with a repute
JO - Journal of Intellectual Property Law & Practice
DO - 10.1093/jiplp/jpaa154
DA - 2020-12-25
UR - https://www.deepdyve.com/lp/oxford-university-press/reputation-alone-is-not-enough-euipo-boa-confirms-that-a-link-is-hP7bByDuP2
SP - 853
EP - 864
VL - 15
IS - 11
DP - DeepDyve
ER -