DECISON SHOWS BOARD OF APPEAL A LOOSE CANON

Some iconoclasm from OHIM, at least as far as the UK is concerned. Tiffany & Co applied to register the shape of its blue box bearing the words TIFFANY & CO as a CTM for various items of fine tableware. It was opposed by the French owners of the tifany [sic] figurative mark for disposable tableware.

Merpel says, surely it's what's inside that counts?

In a decision that barely disguises the Board’s scorn for those who shop at Tiffany & Co, the Board of Appeal found that there was a likelihood of confusion. What will come as a surprise to English trade mark lawyers is that the ECJ’s Canon case has been mistranslated. In the Canon test for similarity of goods, the word “Vermendungszweck” has been translated as “end user” in English . In fact though, it means “purpose of use” of the goods. The purpose of use factor allowed the Board to find the disposable plates and fine tableware to be similar because the purpose of both is to serve and eat food and drink.

The signs were also similar. Even though the sign applied for by Tiffany & Co was a 3-D blue box and not a figurative mark, blue boxes were common and so the element of the mark that was really distinctive was the term TIFFANY & CO on top, which was visually and phonetically similar to the earlier tifany mark. The reputation of the Tiffany box was not well-known in France where the earlier mark was registered, in spite of the “Breakfast at Tiffany’s” film and book.

The IPKat says, he’d always wondered why OHIM has always taken it upon themselves to look at the purpose of goods when considering their similarity. Now he knows the reason why.

Tiffany’s box here
Breakfast at Tiffany’s here
Breakfast of Champions here
Breakfast in bed here
Mr Breakfast here