Keeping it in the family?

Somehow the Opinion delivered late last month (29 March, to be precise) for the European Court of Justice (ECJ) by Advocate General Eleanor Sharpston in Case C‑234/06 P Il Ponte Finanziaria SpA slipped the IPKat's attention.

In 1998 Marine Enterprise Projects (now FMG) applied to register as a Community trade mark a figurative sign the main components of which were the depiction of a roll of cloth, unfurling to take on the form of the sail of a small sailing boat, against a thick horizontal line above which the word ‘Bainbridge’ appears in cursive lettering. Registration was sought for goods in Classes 18 (leather, imitation leather, animal skins, hides; trunks, cases etc) and 25 (clothing, footwear, headgear).

Ponte opposed, citing a number of its earlier Italian trade marks and arguing a likelihood of confusion. These were, effectively, the word mark THE BRIDGE and two families of marks, one figurative and one three-dimensional, for similar goods. The OHIM Opposition Division rejected the opposition on the basis that none of Ponte's marks was sufficiently similar. The Board of Appeal agreed, ruling that the principle of interdependence between similarity of goods and signs (i.e. the more similar the goods were, the less similar the marks needed to be in order to establish a likelihood of confusion) was irrelevant here since there was not even a minimum degree of similarity between the parties' respective marks. The Court of Appeal dismissed a further appeal and the Advocate General is urging the full ECJ to do likewise.

The significant feature of this case is how the courts should treat an opposition based on a family of marks, rather than on a single mark, particularly where not all of the members of the opponent's family might yet have been used. On this issue AG Sharpston had this to say:

"95. The issue here is whether the Court of First Instance was correct to judge that the existence of a family or series of marks could be taken into account as possibly increasing the likelihood of confusion with it of a trade mark presented for registration, and containing an element common to the marks in the family or series, only if the latter were actually used on the market – whereas likelihood of confusion with an individual trade mark which has not yet been put to use on the market may be assessed in the abstract.

96. The concept, and significance, of the existence of a family of marks have not yet been explored in any depth by the Community judicature, other than in the present case, but they are familiar to trade mark lawyers around the world.

97. In the United Kingdom, to take but one example, it has long been accepted that an objection based on the existence of a family or series of trade marks must be founded on use of those marks, because the implication is that traders and the public have gained such a knowledge of the common element or characteristic of the series that when they meet another mark having the same characteristic they will immediately associate it with the series of marks with which they are already familiar. Although that case-law dates back to 1947, it continues to be applied today in the context of the Trade Marks Act 1994, which transposes the Trade Marks Directive.

98. The same approach is taken by OHIM, whose Opposition Guidelines state, inter alia:

‘An assumption of family marks on the part of the public requires that the common component of the marks at issue has, by virtue of use, the necessary distinctiveness to be able to serve, in the eyes of the public, as the principal indicator of a product line.

In order to allow the Office to acknowledge that the different trade marks invoked by the opponent effectively form such a
family of marks, the opponent should demonstrate not only that he is the owner of the marks, but also that the public concerned recognises the common part of these marks as originating from one undertaking. Such “recognition” by the public can only be inferred through submitting evidence of use of the family of trade marks.’

99. Such authority cannot of course be binding on the Court. However, its logic is cogent and should in my view be followed.

100. There is no provision for registering a family of trade marks as such – for example, all marks including the element ‘bridge’ in relation to goods in classes 18 and 25. Only individual marks may be registered, and it is to the individual marks that protection is accorded – but for five years only, unless they are put to genuine use. That is why, when a new trade mark application is received, likelihood of confusion with an earlier mark which has been registered for less than five years but not yet used may be assessed in the abstract, by asking the question ‘what would the average consumer’s perception be if he were confronted with the two marks?’

101. With a series of marks containing a common ‘signature’, the situation is different. The series itself is not registered as such, and so cannot enjoy protection as such. However, the existence of such a series of marks may well, if they are in sufficiently widespread use, affect the average consumer’s perception to the extent that he will be likely to associate any mark containing the common element with the marks in the series (assuming that they cover similar goods or services), and thus to assume a common origin for the various products in question. By contrast, no consumer can be expected to detect a common element in a series of marks which has never been used on the market, or to associate with that series another trade mark containing the same element.

102. Likelihood of confusion within the meaning of Article 8(1)(b) of the Trade Mark Regulation may therefore be assessed having regard to the existence of a family of similar trade marks, but only if actual use can be established of a sufficient number of marks to be perceived by the average consumer as forming a series.

103. I am therefore of the view that the fifth ground of appeal, and consequently the appeal in its entirety, should be dismissed".

The AG's words look like an unassailable proposition of Community trade mark law, says the IPKat. Merpel's not quite so sure, adding 'could this be a case of an English AG being impressed by the wisdom of ages, as reflected in British pre-approximation trade mark practice?

Play Bridge here
Musical Bridges here, here and here
Bainbridge on Intellectual Property here