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In the first part on the topic of "Oppositions", we learned more about the various grounds for refusal of registration, as well as that trademark law does not grant us a monopoly over it. In this article, we examine concepts such as similarity of signs, likelihood of confusion, reputation, etc., which we illustrate with specific examples.
Similarity
An interesting example from the CJEU's case law in this regard is case C-39/97 Canon/Cannon. An application for registration of a Cannon brand in Germany for the following goods and services - "films recorded on video cassettes (video cassettes); production, distribution and projection of films for cinemas and television organizations". The Japanese company "Canon" filed an opposition for infringement of its rights, as the trademark was registered for "cameras and projectors for still and moving pictures; television recording and recording apparatus, television retransmission apparatus, television reception and reproduction apparatus, including tape and disc apparatus for television recording and reproduction".
What does the Court say?
The court said that when assessing similarity, we must put ourselves in the consumer's shoes. This means that similarity would exist when the consumer, who has knowledge of the sector in question, the consumer who buys the product, would either decide that in this case these film devices have the same origin, or that even if he finds out that they come from different undertakings, the latter are economically linked. In other words, if the answer to one of these questions is positive, then the goods are similar. However, if it is clear to the consumer that there is no connection, then we will conclude that there is no similarity.
In this regard, we note that similarity is a very dynamic concept and is largely influenced by the distinctive character of the mark. The stronger the distinctive character of the mark, the less likely there is to be confusion on the part of the consumer, therefore the similarity would be less.
As for the identity of signs as a concept used in the regulation, this refers to completely, completely identical marks and matching goods and services, which is easier to prove in practice.
Likelihood of confusion
In a known case from practice, we have an application for an EU word mark for the word “fifties” for clothing. A Spanish company initiated opposition proceedings based on an earlier national trademark in Spain, including the words “miss fifties”. In this situation, the goods are identical – clothing, but the signs are not.
Is there a similarity?
In an opposition procedure, it must be substantiated that there is sufficient evidence that the relevant public will be confused and that there is a likelihood of confusion. It is also worth noting that if the opposition is filed on the basis of a national trademark, in this case Spain, then the specific public is the one in Spain, because only it can be confused. An important point is precisely the determination of the relevant public, the group of consumers from whose perspective the assessment of the likelihood of confusion should be made.
Reputation
The regulation provides for a hypothesis (Art. 8, par. 5, explained in first part of the article), in which a third party may initiate opposition proceedings if the earlier mark has a reputation. In this case, it is irrelevant whether the goods/services for which protection is sought by the trademark application are similar or not to the goods/services protected by the earlier well-known trademark. In this case, it must be proven that the earlier existing right will be infringed by the registration of the new trademark.
The first step to be taken is to check the reputation of the owner of this trademark. If we are referring to a national trademark, we will examine the reputation only in the territory of the respective country. For an EU trademark, the reputation is examined for the entire territory of the EU.
The second step is to prove the identity and similarity of the marks, in which case it is sufficient for the consumer to be able to make a connection or association. The opposition would be successful if some kind of harm is proven. There are several possibilities – proving that the newly applied for mark takes unfair advantage of the reputation or distinctive character of the earlier mark, or that allowing the registration would be detrimental to the distinctive character of the mark or that it would be detrimental to its reputation. Conversely, the opposition would be unsuccessful if the new applicant could prove that there was “due cause” for using the mark.
An example of successful opposition on this basis is the case between Viagura/OHIM & Pfizer.
In this case, the trademark owner Viagra opposes Viagra for soft drinks. They win because the huge reputation proves that there is an unfair advantage derived from the new seller. The court considers this situation to be parasitism. It says that "Even if the soft drinks in question do not actually have the same benefits as the drug for the treatment of erectile dysfunction, the consumer will be inclined to buy them, thinking that he will find similar qualities, such as increased libido, because of the transfer of positive associations projected by the image of the earlier mark".
Agent
The regulation provides for a hypothesis in which an agent or representative may file an application for registration of a trademark in his own name without the consent of the owner.
In case T-262/09, the Court held that these terms – agent and representative – must be interpreted broadly so as to cover all types of relationships based on a contractual arrangement under which one party represents the interests of the other, regardless of how the contractual relationship between the parties is qualified.
Since 2016, the principal trademark owner has been given the right not only to oppose such an application, but also to oppose the use by the agent or representative and may even request the transfer of the trademark in his favor (Art. 21).
Initiating the opposition procedure when the prerequisites for doing so exist is essential to protect the rights and interests of your trademark. Our team is available to assist you in these matters if you need assistance.
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