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Sunday, 30 October 2005

DON'T BOTTLE IT UP, SAYS OHIM


The IPKat has come across an interesting OHIM Board of Appeal unfair advantage decision.

Hoya Corporation applied to register the ABBSOLUTE word mark as a CTM for lenses for eyeglasses, frames for eyeglasses, eyeglasses, sunglasses and contact lenses in Class 9. V&S Vin & Spirit AB opposed the application based on its CTM for goods in Classes 6, 14, 16, 18, 21, 24, 28, 29, 30, 32, 33, 41 and 42 and the fact that it had a reputation for vodka in Class 33 and goods in Classes 6 and 14. V&S argued that the applied for mark was barred from registration under Arts 8(1)(b) and 8(5) of the CTMR.

The opposition failed before the Opposition Division since the goods were dissimilar (this eliminated the Art.8(1)(b) claim) and the relationship between the parties goods was not of such a nature as to cause consumers to associate the two marks (eliminating the Art.8(5) claim). V&S appealed, arguing in particular that its sponsorship activities had cause the reputation of its mark to spread beyond the field of vodka.

The appeal was allowed by the First Board of Appeal, and the ABBSOLUTE mark was barred from registration under Art.8(5). Of particular interest is that, even though the earlier ABSOLUT mark was primarily used for vodka, the use of the mark in promotions for that vodka gave the mark a reputation in the field of fashion.


In particular, V&S had engaged in sponsorship in the field of fashion, encouraging prominent and undiscovered designers to incorporate the ABSOLUT bottle into their designs. The results were featured in Vogue. Although the main purpose of this practice was to promote the mark, it meant that the relevant public became used to seeing the mark on such goods in connection with the fashion industry. Since the relevant public was used to seeing ABSOLUT as a young, fashionable brand, by using the ABBSOLUTE mark on lenses for glasses, frames, glasses, sunglasses and contact lenses, Hoya would take unfair advantage of the reputation of the ABSOLUT mark to benefit itself in selling the goods that it had applied for. Hoya’s use on the applied-for goods would enable it to attract to itself the goodwill currently associated with V&S as a sponsor of the fashion industry which was the result of a large investment of time, effort and money on V&S’s part. This amounted to both free-riding on the coat-tails of a renowned mark and an attempt to trade on its reputation and consequently was a case of taking unfair advantage of the repute of the earlier mark.

The IPKat says that this decison goes to show that sponsorship activity need not (according to OHIM) be assimilated to the use of the mark in relationship to the primary goods which the sponship is designed to draw attention to. Instead, it can build up a field of reputation around itself. This may however be an exceptional decision. The promotional clothing that was produced here counted as high fashion. The same would not be true of, say, promotional T-shirts or hats and such use may not lead to a separate reputation for fashion independent of the reputation of the marks for the goods being promoted.

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