On Tuesday the Court of First Instance of the European Communities (CFI) ruled in Case T‑420/03, El Corte Inglés, SA, v Office for Harmonisation in the Internal Market, José Matías Abril Sánchez and Pedro Ricote Saugar, one of those cases that makes Community trade mark law seem a lot more complex and a lot less attractive to applicants than it can be.Sánchez and Saugar applied to register the Boomerang TV figurative mark (above) for, among other things. "cinema and recording studios, rent of videos, concourse (scattering), installation of television and radiophones, production of films" in Class 41. One of the IPKat's favourite stores, the Spanish chain of El Corte Inglés, opposed, as proprietor of a number of earlier Spanish, UK, Community and allegedly well-known Paris Convention figurative Boomerang marks - two of which are shown here -- which included the word 'boomerang' for, among other things, telecommunications services in Class 38, education and entertainment services in Class 41, installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes’ in Class 11, hand tools and instruments; cutlery, forks and spoons; side arms; safety razors in Class 8, as well as various items of clothing.
According to El Corte Inglés there existed a likelihood of confusion under Art.8(1)(b) of Council Regulation 40/94. Sadly for them, neither the Opposition Division nor the Board of Appeal agreed, concluding that there was no identity or similarity between the services for which registration of Boomerang TV was sought and the various goods and services for which El Corte Inglés held registrations of its own Boomerang marks. On what looks like a final fling, El Corte Inglés took their opposition from Alicante to Luxembourg, hoping perhaps that at a greater distance the likelihood of confusion might have grown. Alas, it did not. The CFI considered that the fact that some of the services for which El Corte Inglés had registered its marks might be advertised on television did not mean that those marks might be linked with television productions.
Apart from the slight problem of dissimilarity of services, El Corte Inglés had another hurdle to surmount, of a more procedural nature. This proved impossible. The CFI considered that the Board of Appeal did not dismiss the action brought before it by El Corte Inglés solely on the ground that the retail chain had submitted facts and evidence out of time; the Board had exercised its discretion correctly as to whether to consider the late-submitted evidence and that was an end to the matter.The IPKat wonders whether the whole opposition exercise was really worth the bother; couldn't El Corte Inglés have done something more constructive with its ample financial resources, he wonders. Merpel adds, that second mark of El Corte Inglés really puzzles me. It says "boomerang" but looks more like a koala ...
My Boomerang Won't Come Back (best listened to with the speakers turned off) here
Koala recipe here
El Corte Inglés gets a bashing from a boomerang
Reviewed by Jeremy
on
Thursday, June 19, 2008
Rating:
Reviewed by Jeremy
on
Thursday, June 19, 2008
Rating:
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Jeremy, you didn't discuss the Art.8(5) point. Briefly, El Corte Ingles tried to prove that its mark was well known under Art.6bis. The CFI found that there was insufficient evidence to show this. Thus, when it came to the Art.8(5) case, it therefore followed that the mark did not have a reputation, and therefore didn't qualify for Art.8(5) protection.
ReplyDeleteThe court states:
"although the degree of recognition to be proved regarding marks possessing a reputation within the meaning of Article 8(5) of Regulation No 40/94 is not as high as that in the case of well-known marks within the meaning of Article 6bis of the Paris Convention"
In other words, the standard of fame (for want of a better word) needed is higher to qualify for Art.6bis Paris than Art.8(5).
Stepping back, this leaves the European system in a rather odd position. It means that it is easier to qualify for the extra special confusion-free dilution protection of Art.8(5) than it is to qualify for the confusion-based Art.6bis. Not only does this look strange, but it's also at odds with the US, where the fame requirement to qualify for dilution has recently been substantially strengthened.
The only justification I can think of is that a mark needs to be registered to qualify for Art.8(5)protection, but not to qualify for Art.6bis protection.
I didn't discuss the Art.8(5) point because it was crushed by evidential inadequacy and looked as though it was only tossed in as a speculative afterthought by El Corte Inglés.
ReplyDeleteI think the CFI was only trying to say that more proof is needed that a mark is well-known than if it is merely known, and would guess that the CFI was not seeking to make a meaningful contribution to the jurisprudence. But I might be wrong ...
It looks to me like a clear statement that the standard for 8(5) is lower than that for 6bis. This makes sense if you look at the definition of reputation the ECJ employed has employed in General Motors (i.e the reputation = 'known') but still leaves us with a system for extended protection of TMs that could be considered asymmetric in the wrong direction.
ReplyDelete