The Darjeeling question: what's your cup of tea -- a T-bag or a G-string?

The power of a Community collective mark, when contrasted with a protected geographical indication, was put to the test on 2 October, in Cases T-624/13 (noted here), T-625/13, 626/13 and 627/13 The Tea Board v Office for Harmonisation in the Internal Market (Trade Marks and Designs), Delta Lingerie Intervening, when the Eighth Chamber of the General Court of the European Union gave its decision on a series of separate Community trade mark oppositions relating to very similar signs which were opposed in each action by the same earlier marks (the applicant's mark in Case T-624/13 is illustrated on the right).

Darjeeling, a municipality in West Bengal, India, is an area that is synonymous with the production of a high-quality black tea; the production and sale of local tea is controlled  by The Tea Board,  The Tea Board, relying on earlier collective Community word and figurative collective marks comprising the term ‘darjeeling’ for tea (Class 30), sought to annul a decision of the Second Board of Appeal to reject its opposition to register as a Community trade mark (CTM) a figurative sign (illustrated, left) for which Delta, a French company, sought registration.  Delta's mark comprised the identical word element ‘darjeeling’, but was for dissimilar goods and services in Classes 25, 35 and 38, including bras, panties and G-strings.

Said the Tea Board, the Board of Appeal erred in law when carrying out its comparison of the goods and in its global assessment of a likelihood of confusion under Article 8(1) of Community Trade Mark Regulation 207/2009 by failing to take into account the specific essential function of collective marks to guarantee the actual or potential geographical origin of the goods or services at issue. Further, said the Tea Board, the Board of Appeal wrongly concluded that there was no risk of the sign applied for taking unfair advantage of, or be detrimental to, the distinctive character or repute of its earlier marks under Article 8(5) of the same Regulation. Incidentally, since The Tea Board did not rely on a geographical indication when lodging its opposition, the absolute ground for refusing registration of signs consisting of a protected geographical indication under Article 7(1)(k) of the Regulation did not apply.

The Court annulled the Board of Appeal's decision in respect of the goods in Class 25 and some of the services in Class 35, but dismissed the action in respect of services in Class 38 (mainly relating to telecommunications, interactive transmission and online services). In the Court's view:

Scope of protection for Community collective marks and their essential function

* It cannot be inferred that Community collective marks, including those consisting of an indication which may serve to designate the geographical origin of the goods covered, have a different essential function from Community individual marks (which is to distinguish the goods or services of the specific body which is the proprietor of the mark from those of other undertakings). Collective marks do not, however, constitute a guarantee of geographical origin.

Darjeeling: for the discerning cat ...

* A Community collective mark consisting of an indication that can designate geographical origin, such as "darjeeling" is capable of fulfilling the essential function. Although the regulations governing use of a Community collective mark must authorise any person whose goods or services do originate in the geographical area as a member of the proprietor association, it does not prevent that association from stating in those regulations that undertakings which collaborate with bodies whose goods originate from the geographical area or use the goods of the association as their raw materials, without being established in, or having their goods originate directly from, the geographical area, may be members and make use of the mark.

Likelihood of confusion: comparison of goods and services

* Where, in the context of opposition proceedings, the respective signs are collective marks and individual marks, comparison of the goods and services must be carried out using the same criteria as those which apply to an assessment of the similarity or identity of goods and services covered by two individual marks [it's difficult to see how the General Court could have reached the opposite conclusion; nonetheless, it's good to see this principle clearly articulated here].

* That the public might believe that the goods and services covered by the signs at issue have the same geographical origin does not constitute a criterion sufficient to establish similarity or identity. To rule otherwise would effectively give collective marks absolute protection, irrespective of the goods covered by the signs at issue [this is why it's better to have protected geographical indication protection in Europe, adds Merpel: try using "Champagne", irrespective of the goods or services you want to use it for, and see how far you get ...].

* The goods and services here were dissimilar. The mere possibility that the average consumer might believe that the goods and services provided under a trade mark were connected with goods originating in the geographical area of the same name was insufficient to establish similarity or identity between the goods and services. As such, one of the cumulative conditions for establishing a likelihood of confusion had not been met.

Likelihood of confusion: a global assessment

* Similarity between the signs does not on its own constitute a likelihood of confusion. A certain degree of similarity between the goods and services, however minimal, must be established, which may be offset by a greater degree of similarity between the signs, and vice versa. In this case the likelihood of confusion is the risk that the relevant public might believe that the goods and services come from the same or economically linked undertakings -- not that the public might believe that the goods, any raw materials used in making them or services may have the same geographical origin.

* Here, given the total lack of similarity between the goods and services, the Board of Appeal rightly found that the goods and services covered by the signs at issue were dissimilar.

Detriment and unfair advantage [the EU nont-quite-equivalent of tarnishment and dilution]

* As with likelihood of confusion, any assessment concerning a collective mark, including the assessment of whether it has a reputation within the meaning of Article 8(5), must be carried out using the same criteria as those applicable to individual marks [again, it's difficult to see how the Court could have said otherwise -- though use of the same criteria is not the same as their identical application to different types of marks. This distinction is well known under EU trade mark law: for example, the criteria for establishing distinctive character of an applied-for sign are the same in all cases, but they are applied differently to, eg, word marks, shape marks and non-traditional marks].

* The registration of earlier trade marks as collective marks cannot, per se, give rise to a presumption that those marks have average distinctive character.

* It is an implied essential precondition that the relevant public perceive a link between the marks at issue, even if it does not confuse them, even though the existence of a link is not sufficient in itself to establish the existence of risk. In the absence of such an association on the part of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.

There are three separate types of risk, one of which the proprietor of the earlier mark must prove as being actually present or which prima facie exist for the future, based on logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector:

(i) is the applicant's mark detrimental to the distinctive character of the earlier mark ("dilution", "whittling away" or "blurring") where the mark’s ability to identify goods or services is weakened?

(ii) is the applicant's mark detrimental to the repute of the earlier mark ("tarnishment" or "degradation", where the mark’s power of attraction is reduced?

(iii) does the applicant's mark take unfair advantage of the distinctive character or the repute of the earlier mark ("parasitism" or "free-riding"), where the marketing efforts of the earlier mark’s proprietor to create and maintain the image of the mark are exploited?

* On the facts the Board of Appeal was right to hold that there was no risk that the use of the mark applied for would be detrimental to the repute of the earlier trade marks: there was no objective evidence and the alleged risk was hypothetical.

* However, the Board of Appeal did not reach a definitive conclusion regarding the reputation of the earlier trade marks and wrongly ruled out a risk of an unfair advantage being taken as regarded all the goods in Class 25 and services in Class 35. The contested decision was therefore partially annulled, leaving it for the Board of Appeal to re-examine the arguments on the existence of a risk of an unfair advantage being taken within the meaning of Article 8(5).

This Kat thinks the General Court's summary and guidance were good and provide quite a handy checklist both for prospective rights owners who want to weigh up the strengths and weaknesses of Community collective marks and protected geographical indications and for applicants for subsequent trade mark registrations who want to gauge the scope of protection offered by earlier registered rights.  Merpel says there's no point in taking this ruling too seriously: since (i) The Tea Board was only partially successful and (ii) Indian litigants, in common with those from many other strongly developing nations, have a strong sense of indignation when they sense that a part of their traditional heritage is being commercially exploited, it is inconceivable that this decision will not be appealed.  Once before the Court of Justice of the European Union, who knows what might happen?

Darjeeling tea: with or without milk? Here
Grow your own Darjeeling tea here
Darjeeling tea: myths and stories here