| TRADE MARK — Proprietor’s rights — Registered trade marks with reputation — Risk of unfair advantage of distinctive character — Requirements for establishing — Council Regulation (EC) No 40/94, art 8(5)
SIGLA SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Elleni Holding BV, other party) (Case T-215/03)
CFI: President of Chamber Vilaras, Judges Dehousse and Šváby: 22 March 2007
The risk that the use of a trade mark applied for would take unfair advantage of the distinctive character or repute of an earlier mark existed where a consumer, without necessarily confusing the commercial origin of the product in question, was attracted by the mark itself and would buy the product on the ground that the mark was identical or similar to the earlier mark.
The Fifth Chamber of the Court of First Instance of the European Communities so stated, inter alia, when allowing an appeal by S SA from a decision of the Third Board of Appeal of OHIM allowing an appeal by EH BV from a decision of the Opposition Division of OHIM upholding an opposition by S to EH’s application for a Community trade mark.
The mark applied for by EH was the word sign “VIPS”, in respect of computer programming for hotel, restaurant and cafés, and S’s opposition, based on its word mark “VIPS” registered in Spain for food, restaurant and hotel services, was grounded inter alia on art 8(5) of Regulation 40/94 on the Community trade mark.
Art 8(5) provides: “... upon opposition by the proprietor of an earlier trade mark ..., the trade mark applied for shall not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where … the [earlier] trade mark has a reputation in the Community and …the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.”
THE COURT, considering the first ground of appeal, relating to art 8(5), said inter alia that, by analogy with Davidoff & Cie SA v Gofkid Ltd (Case C-292/00) [2003] 1 WLR 1714, art 8(5) applied where the goods or services were similar as well as where they were dissimilar. Although a trade mark’s primary function was to indicate origin, it also conveyed other messages as to the qualities or characteristics of the goods or services in question, and had an inherent economic value which was independent of the goods or services. Unfair advantage, in art 8(5), was to be distinguished from the likelihood of confusion, mentioned in the ground for registration set out in art 8(1)(b) of Regulation 40/94. There was likelihood of confusion where the consumer might believe that the product covered by the mark applied for had the same commercial origin as the earlier product; the risk of unfair advantage being taken of distinctive character or repute did not necessarily depend on likelihood of confusion. An opposition party had to prove the alleged reputation of his mark, but it was possible, in the case of a mark with exceptionally high reputation, that the probability of a future, non-hypothetical risk of detriment to the reputation was so obvious that that party did not have to prove any further fact to that end. The court rejected the first ground of appeal, on the facts of the case, but allowed the appeal, and annulled the decision appealed from, on the second ground of apeal, concerning a procedural matter.
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