Today the Court of First Instance of the European Communities (CFI) gave its decision in Case T‑477/04 Aktieselskabet af 21 november 2001 v Office for Harmonisation in the Internal Market, TDK Kabushiki Kaisha (TDK Corp.).
In short, Aktieselskabet applied to register the unpronounceable word TDK as a Community trade mark for clothing, footwear and headgear in Class 25 TDK opposed, citing not only an earlier Community trade mark but no fewer than 35 earlier national trade marks registered for goods in Class 9 (‘apparatus for recording transmission or reproduction of sound or images’). Some of its earlier marks consisted of the word TDK; others were for the figurative mark shown on this post, above right.
Not surprisingly the Opposition Division found that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 40/94, since the parties' respective goods were not identical, similar or even complementary. The opposition was however upheld under Article 8(5) on the basis that Aktieselskabet's mark, without due cause, was taking an unfair advantage of the repute or distinctive character of TDK's marks. Aktieselskabet appealed unsuccessfully to the Board of Appeal. Today it discovered that its appeal to the CFI was also unsuccessful.
Part of Aktieselskabet's appeal was based on the contention that TDK's earlier marks did not have so great a reputation as to be entitled to Article 8(5) protection. In this context, noted the CFI:
"The Board of Appeal found that both the commercial and sponsorship activities referred to ... extended throughout Europe and required the investment of substantial amounts of money, time and effort. It also held that the sponsored events were often televised or recorded, thereby ensuring wider exposure of the earlier marks to the public".This shows, the IPKat says, how important commercial sponsorship can be in helping to establish and preserve protection for a trade mark even in respect of categories of goods and services for which it has not been registered. Merpel agrees, adding that it's one of those nice situations in which use by a sponsored party - i.e. third party use - accrues to the benefit of the trade mark owner's reputation even if no specific goodwill attaches to it.
UK sponsorship database here
European Sponsorship Association here