A dispute of Biblical dimensions: General Court investigates David and Daniel

Today, the General Court delivered its judgment in Case T-498/10, David Mayer Naman v OHIM, providing an interesting overview on the mechanics of proof of use and exploring the evaluation of phonetic and conceptual differences of word signs containing personal names and surnames. The lengthy judgment features biblical references, an in-depth disquisition on the pronunciation of Italian and foreign names beginning with 'Da', and a statistical analysis of the occurrence of the surname 'Mayer' (and 'Rossi' and 'Fusco') in Italy. However, fun is limited to the first 119 paragraphs, as the last one inevitably states that the GC 'dismisses the action'.

The contested Community trade mark

In 2001, on application by Mr. David Mayer Naman, the OHIM registered the figurative Community trade mark David Mayer (CTM No. 001518950 - written in ‘futura’ type and modified graphically), in relation to several classes of goods, including Class 18 (leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; trunks; valises; umbrellas; parasols; walking sticks; whips, harness and saddlery) and Class 25 (clothing, footwear; headgear).

Six years later, on 24 October 2007, Daniel & Mayer S.r.l. filed an application for declaration of invalidity of the Community trade mark for both classes. With a first plea, the claimant asserted invalidity in light of Articles 52(1)(a) and 8(1)(b) of Council Regulation EC 40/94 (now Articles 53(1)(a) and 8(1)(b) of Council Regulation EC 207/2009 - CTMR), for likelihood of confusion with the earlier national trade mark DANIEL & MAYER MADE IN ITALY, registered by the claimant in Italy in 1981 for goods in Class 25. A second plea called for the relative ground for invalidity of Article 52(1)(c) (now 53(1)(c) CTMR), as the claimant argued that the sign DANIEL & MAYER was used in Italy in the course of trade and fulfilled the requisites set by Article 8(4).

The Cancellation Division, in 2009, annulled the CTM registration, in relation to Classes 18 and 25, accepting the first plea brought by the claimant. David Mayer Naman appealed, arguing that (1) the claimant had not brought sufficient proof that the earlier national trade mark had been put to genuine use under Article 57(2) CTMR, (2) the goods produced by the two firms were destined to different markets, (3) the word ‘Mayer’ was scarcely distinctive and the two conflicting marks had relevant phonetic, visual and conceptual differences, sufficient to avoid any risk of confusion, (4) the marks had already pacifically coexisted for several years. The First Board of Appeal found that (1) the Community trade mark owner had lost the possibility to request proof of genuine use as he had not invoked Article 57(2) CTMR during the proceeding before the Cancellation Division, (2) as stated by the Cancellation Division, the items in Classes 18 and 25 were, respectively, similar and identical, and market considerations could not alter this conclusion, (3) the similarities between the conflicting marks were sufficient to give rise to a likelihood of confusion, (4) the pacific coexistence had to be ruled out, as the trade mark owner had not called for the application of Article 54(2) CTMR. Accordingly, it rejected the appeal and upheld the Cancellation Division’s decision. David Mayer Naman brought action against the Board of Appeal’s decision before the General Court, asserting the violation of Article 54(2), Article 57(2) and (3) and Article 8(1)(b) of the CTMR.

The General Court promptly rejected the first claim, noting that the violation of Article 54(2) had not been asserted in the proceedings before the Cancellation Division and the Board of Appeal. Reciting Articles 65(2) and 76 CTMR, it observed that the Court’s scrutiny is limited to the facts, evidence and arguments brought by the parties during the previous proceedings, and to the matters of law thereby examined (Case T-57/03, Société provençale d’achat et de gestion (SPAG) SAS v OHIM). Furthermore, the applicant had failed to include this claim in his application: the Court clarified that failure to state a claim in the application cannot be compensated by introducing the claim at the hearing (unless the plea is based on matters of law or of fact which come to light in the course of the procedure), as stated by Article 48(2) of the Rules of procedure of the General Court and held in previous case law (Case T‑246/06, Redcats SA v OHIM).

With its second plea, concerning the alleged violation of Article 57(2) and (3), the applicant contested the Board of Appeal’s rejection of the request for proof of use of the earlier national trade mark, which was based on the circumstance that the Community trade mark owner had not made the request before the Cancellation Division. The applicant argued that the Board had failed to distinguish between a request aimed at a partial revocation with erga omnes effects and an exception of partial revocation, with inter partes effects, aimed at excluding the risk of confusion between the conflicting marks. The General Court recited several provisions of Commission Regulation EC 2868/95, which refer to a specific time frame within which the request for proof of genuine use should be made, and held that [according to this Kat's translation]:

[34] According to previous case law, the earlier mark is presumed to have been put to genuine use as long as the applicant does not request proof of that use; said request shall be made expressly and timeously to OHIM. More specifically, the adverb ‘timeously’ does not merely relate to the respect of an assigned time frame, but implies that it is necessary to file the request before the Opposition or Cancellation Division, and that the claimant cannot introduce the plea, for the first time, before the Board of Appeal (Case T-364/05, Saint-Gobain Pam v OHMI).

[35] This case law relies on the fact that the proof of genuine use, or the lack thereof, is capable of affecting the content of the proceeding for declaration of invalidity and thus represents a preliminary question, to be decided before the rest of the application. The request for proof of genuine use of the earlier mark has the effect of shifting the burden of proof of genuine use (or of the existence of proper reasons for non-use) to the party which applied for the declaration of invalidity, upon pain of having its application dismissed. It follows from the foregoing considerations that it is for the Cancellation Division, at first instance, to determine the application for invalidity, as defined by the requests of the parties, including, where appropriate, the request for proof of genuine use of the earlier mark. The Board of Appeal, according to Article 135(1) of Council Regulation EC 207/2009, is competent to determine an application brought against a decision of the Cancellation Division and, therefore, cannot rule for the first time on a new plea for a declaration of invalidity.

The Court added that this conclusion is coherent with the principle of continuity of functions. In light of the provisions and case law recited, the request must be made in the period prescribed to the applicant by the Cancellation or Opposition Division. The distinction proposed by the applicant, between a request for partial revocation, subject to the prescribed time frame, and an exception with limited effects, which could be asserted at any stage of the invalidity proceeding, was dismissed as unfounded in the provisions of the CTMR.

(c) Evelyn Gathings
Merpel's new fashion dress!

Turning its attention to the plea concerning the application of Article 8(1)(b), the General Court first provided a theoretical overview of the notion of likelihood of confusion. It noted that the notion refers to the risk that ‘the public might believe that the goods or services in question come from the same undertaking or […] from economically-linked undertakings’ (Case T-162/01, Laboratorios RTB SL v OHIM). The likelihood of confusion must be assessed globally, taking into account the similarities between the trade marks and between the goods or services, and the interdependence of these factors, from the perspective of an average consumer. The visual, phonetic or conceptual similarity of the marks is to be evaluated on the basis of the overall impression created by them, taking into account their distinctive and dominant components.

On the relevant public, the Court dismissed the arguments pointing to the different markets to which the products bearing the conflicting marks were aimed (clothes for men, for DAVID MAYER; clothes for women, for DANIEL & MAYER), observing that the goods protected by the marks referred indistinctly to a male or female public, and that the applicant’s argument was related to the inadmissible request for proof of genuine use. Further, it clarified that the level of attention exhibited by the relevant public towards certain marks is not dependant on the nature of the goods involved, but rests upon the marketing efforts made by the firms (Case T-522/08, Ruiz de la Prada de Sentmenat v OHIM).

The Board of Appeal’s considerations on the comparison of products were also upheld. Evaluating the applicant’s assertion of a violation of the duty to state reasons, the Court recited Articles 75 CTMR and Article 50(2)(h) of Regulation 2868/95, which prescribe the duty to state reason in relation to the OHIM’s decisions, and stated that the requisite aims to allow the parties to know the justification for an act or measure, enabling them to protect their rights, and to allow the EU judges to review its legality. The Court conceded that the reasons stated in the contested decision were succinct, but observed that the principle of continuity of the functions between the Cancellation Division and the Boards of Appeal made it possible to take into account the reasons adduced by the former in the decision upheld by the latter. In particular, the Court held that:

[57] … since the Board of Appeal has upheld the Cancellation Division’s decision, in its entirety, and taking into account the principle of continuity of the functions between the Cancellation Division and the Board of Appeal, in light of Article 64(1) of Regulation 207/2009 … the Cancellation Division’s decision and its reasons are part of the legal framework within which the contested decision was adopted; this context is known to the applicant and allows the judge to exercise its power to review the legality of the evaluation of the likelihood of confusion.

The General Court added that the comparison of products had been rightfully conducted by the Board of Appeal, in relation to the goods listed in the registration, considering the non-applicability of Article 57 CTMR. The Court noted that where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (Case T-29/04, Castellblanch SA v OHIM). On the complementarity of goods belonging to Classes 25 and 18, the judges stated that ‘goods are complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for the production of those goods lies with the same undertaking’ (Case T-443/05, El Corte Inglés SA v OHIM). Accordingly, ‘[g]oods such as shoes, clothing, hats or handbags may, in addition to their basic function, have a common aesthetic function by jointly contributing to the external image (‘look’) of the consumer concerned’: the same comparison applied in the present case.

The last part of the General Court’s judgment examined the comparison of marks. The Board of Appeal had found relevant visual, phonetic and conceptual similarities between the conflicting marks. The dominant elements, according to the Board, were the words used in the signs, which included a common surname ‘Mayer’, preceded by two similar personal names, ‘David’ and ‘Daniel’.

Does the library of the Court of Justice
hold a copy of the Talmud?

The applicant’s effort to prove that the surname ‘Mayer’ is widely diffused in Italy proved useless. The Court observed that the applicant had been able to indicate only one firm operating in the fashion industry, in Italy, that used a mark containing that word. It also stated that the use of said word, as surname or company name, is insufficient to demonstrate the diffusion and the lack of distinctive character of the sign ‘mayer’. On the visual comparison, the General Court highlighted the identity of the second words and the similarity of the first ones (which begin with ‘Da’ and have a comparable length) and held that ‘when comparing a denominative sign and a figurative one, even if the first element of each of the conflicting sign is not identical, the presence of a common element does not allow [the judge] to deny the existence of a certain degree of visual similarity between the conflicting marks’ (see Case T- 433/09, TTNB v OHIM). The presence of a different element, the ‘&’ sign, was deemed negligible, since the consumer usually perceives it as a secondary element (Case T-11/09, Özdemir v OHIM).

Things got even more interesting in relation to the phonetic and conceptual comparison. The Court dug deep into the pronunciation of the words ‘Daniel’ and ‘David’, and their Italian versions ‘Daniele’ and ‘Davide’, and of the word ‘&’ (‘e’). Further, it engaged in an interesting exploration of the origins of the name ‘Mayer’:

[95] As the Board of Appeal rightfully pointed out … the word ‘mayer’ is understood, by the relevant public, as a surname of Germanic origin, moderately diffused in Italy, especially in some northern regions … This observation is not invalidated by the fact, admitted by the parties and mentioned by the Board of Appeal, that this element is actually, in the conflicting signs, a Hebrew name, specifically an Ashkenazic form of the name Meïr. More precisely, "the name Mayer is an ancient name (which dates back to the Talmudic era and derives from Mäir) that means ‘the one who enlightens'  [as the person bearing this name taught the Law to the wise men]; this name is common within the Jewish community of Tripoli, Libya, and is used as a personal name" (according to a judgment of the Tribunale di Milano) … However, it should be noted that the Talmudic origin and the Ashkenazic alteration of the Hebrew name Meïr or Maïr are unknown to the average buyer of clothes in Italy, who perceives the word ‘mayer’ as a surname of German origin.

The names ‘Daniel’ and ‘David’, which share the same origin as 'Mayer', are seen by the relevant public as personal names. Therefore, as each conflicting mark contains a personal name, followed by a surname, the judges held that the mere presence of a linking element, the ‘&’, could not exclude the similarity of the signs (see Case T-11/09, in relation to the marks James Jones and JACK & JONES).

The Court dismissed the arguments concerning the notoriety of the trade mark registered by the applicant, observing that it is only the reputation of the earlier mark that is evaluated to assess whether the similarity between the conflicting marks is sufficient to give rise to the likelihood of confusion (Case C-498/07 P, Aceites del Sur-Coosur SA v Koipe and OHIM). It also maintained that the likelihood of confusion cannot depend on the methods of distribution employed by the owners of conflicting marks. As clarified in previous case law, ‘as particular marketing strategies for goods covered by the marks can vary over time and depend on the wishes of the proprietors of those marks, the prospective assessment of the likelihood of confusion between two marks cannot be dependent on marketing intentions, whether implemented or not, which are by their very nature subjective for the proprietors of the marks’ (Case T‑363/06, Honda Motor Europe Ltd v OHIM).

Finally, the pacific coexistence of the marks was ruled out, as the parties are involved in several lawsuits concerning the use of the conflicting marks. Arguments related to the use of patronymics as marks in the fashion industry shared a similar fate. The General Court noted that, while it is true that consumers will not believe that there is an economic link between all the proprietors of marks containing a widely diffused surname (such as ‘Rossi’ - see Case T-169/03, Sergio Rossi v OHIM), that is not the case in relation to the name ‘Mayer’ in Italy. En passant, the judges also stated that the likelihood of confusion is higher in relation to foreign names, as consumers are more sensitive to small differences when dealing with signs express in their national language.

Find out more about David and Daniel here.
Browse statistical data on the diffusion of names in Italy here.
BBC's Talk Italian lessons here.