CJEU upholds Burlington Arcade's grounds of appeal against Burlington trade mark applications

Last week marked the end of a lengthy battle between Tulliallan Burlington (‘Tulliallan’), proprietor of the high class shopping arcade in central London, ‘Burlington Arcade’, and German Fashion GmbH (‘BF’). The dispute arose in response to the latter’s application for registration of the word mark ‘Burlington’ and other figurative marks as EU trade marks, with proceedings examined by the Opposition Division, EUIPO Fourth Board of Appeal, General Court, before finally culminating in the judgment of the Court of Justice of the European Union ('CJEU') in Joined Cases C-155/18 P to C-158/18 P (and after an Opinion of Advocate General ('AG') Hogan).

Despite the AG Opinion recommending that the decision be referred back to the General Court, the CJEU decided to give the final say in the case (as *spoilers* it quashed the decision of the General Court and annulled the decision of the Fourth Board of Appeal). This conclusion was based on errors in law made by the General Court in relation to the assessment of infringement of Article 8(5) of Regulation 207/2009 (the first ground of appeal submitted by Tulliallan) and infringement of Article 8(1)(b) of the same Regulation (the third ground of appeal).

Background

Between November 2008 and November 2009, BF filed applications with the EUIPO for protection in the European Union of several marks which had been internationally registered, including 3 figurative marks (pictured) as well as the word ‘BURLINGTON’. 

Marks applied for by Burlington Fashion Gmbh

Protection was sought in relation to the following classes:

• Class 3, including soaps for cosmetic purposes;
• Class 14, including jewellery and watches;
• Class 18, including leather and leather products; and 
• Class 25, including footwear, clothing, headgear and belts.

In response, Tulliallan submitted notices of opposition between August 2009 and August 2010 in respect of the goods in classes 3, 14 and 18. This was based on its own existing trade marks and rights:

• UK word mark ‘BURLINGTON’, for classes 35 and 36 (registered in December 2003); 
• UK word mark ‘BURLINGTON ARCADE’ for classes 35, 36 and 41 (registered in Nov 2003);
• UK figurative mark (below) for classes 35, 36 and 41 (registered in Nov 2003); and
• EU figurative mark (below) for classes 35, 36 and 41 (registered in Oct 2006).

UK and EU TMs of Tulliallan

Tulliallan’s grounds of opposition were based on Articles 8(1)(b), (4) and (5) of the Regulation. Whilst accepted by the Opposition Division, following the filing of 4 notices of appeal by BF, the EUIPO Fourth Board of Appeal (BoA) rejected these grounds, and the decision of the Opposition Division was annulled.

Pleas in law submitted by Tulliallan before the General Court ('GC'):

Tulliallan essentially raised 3 pleas in law: 

1. Infringement of Article 8(5) of the Regulation (relating to opposition based on detriment to the earlier mark’s reputation) - namely that: the GC ought to have found a link between the earlier trade marks and marks applied for; that the GC erred in its conclusion that Tulliallan had not provided the relevant evidence to establish dilution or unfair advantage;
2. Infringement of the obligation to state reasons, an infringement of the right to be heard and an infringement of Article 8(4) of the Regulation [it was agreed at all levels to be unfounded, and consequently won’t be addressed further here]; and

3. Infringement of Article 8(1)(b) of the Regulation (relating to opposition based on likelihood of confusion) - namely that the GC erred in law by relying on Praktiker Bau- und Heimwerkermärkte (C-418/02, ‘Praktiker’) to find no similarity between the services covered by the earlier TMs and the goods covered by the marks applied for.

Regarding the first ground of appeal, the GC criticised the Board of Appeal for its narrow interpretation of ‘retail services’ based on Praktiker, stating that ‘retail services’ would include a shopping arcade’s services in relation to sales. The GC also stated that Tulliallan could rely on the protection of earlier mark’s reputation for all of the services covered by earlier marks in Class 35. However, the GC found that Tulliallan had not submitted consistent evidence to conclude that the use of the marks applied for world take unfair advantage of the distinctive character of the repute of the earlier marks. It stated that, despite Tulliallan’s claims of “near uniqueness” of its earlier TMs, it hadn’t provided specific evidence capable of substantiating that use of the marks applied for would make the earlier TMs ‘less attractive’.

On the third ground of appeal, the GC held that the BoA had been correct in finding dissimilarity between Tulliallan’s services and the goods applied for by BF. On the basis of Praktiker for Class 35 (since ‘retail services’ included shopping retail services), the goods offered for sale by the shopping retail service would need to be precisely specified. The absence of such a statement by Tulliallan in relation to the goods that their services related to, in the eyes of the GC, meant no similarity or complementarity could be established between the services covered by its earlier TMs and the goods covered by the marks applied for.

The GC thus dismissed all of the actions in their entirety.

The CJEU Judgment

Infringement of Article 8(5) of Regulation 207/2009

After a recap of the case law surrounding Article 8(5), the CJEU reiterated that the conditions of Article 8(5) were cumulative. It would only need to be found that one of the conditions - (1) a link; (2) reputation of earlier mark; or (3) a risk that use of the mark applied for without due cause would take unfair advantage of, or be detrimental to, distinctive character or the repute of the earlier trade mark - was not satisfied in order for the application of the provision to be precluded. In the GC’s decision, the GC proceeded directly to an analysis of the third condition, ultimately finding no risk of unfair advantage, detriment to distinctive character or detriment to the repute of the earlier trade mark. In concluding that there was no risk, the GC had effectively precluded the need to examine if there was a link between the marks (since one of the cumulative conditions had not been satisfied), and so this was not an error of law as claimed by Tulliallan.

However, the CJEU made clear that the manner in which the GC had determined that there was no risk was, an error in law. As set out in Intel (C-252/07), a finding of one of the types of injury set out in the third condition of Article 8(5) was to be determined on a global assessment of the factors relevant to the circumstances of the case. But the GC, in its determination, made several references to attractiveness: that the applicant had not “provided ... evidence capable of substantiating the fact that the use of the mark applied for would make its earlier trade marks “less attractive””; that “the fact that another economic agent may be authorised to use a mark including the word “Burlington”, for goods similar to those on sale in the applicant’s London arcade, is not in itself as to affect, in the eyes of the average consumer, the commercial attractiveness of that place”.

The CJEU made clear that such “ambiguous references” to attractiveness did not confirm beyond all doubt that there was an assessment of the risk of detriment to distinctive character or repute of the earlier trade mark, nor was it capable of proving no risk of unfair advantage. ‘Commercial attractiveness’ was also determined by the CJEU to not relate directly to any of the three types of detriment in the third condition of Article 8(5) of Regulation 207/2009. Thus the CJEU found that the GC did not assess the evidence provided by Tulliallan in support of its Article 8(5) ground of opposition, and the first ground of appeal was upheld.

Infringement of Article 8(1)(b) of Regulation 207/2009

The CJEU combined all of the elements of Tulliallan’s third ground of appeal and queried whether the GC had erred in law in relying on the judgment in Praktiker in order to find that no similarity or complementarity could be established between the services covered by the earlier TMs and the goods covered by the marks applied for.

The CJEU agreed with the GC conclusion that the concept of ‘retail services’ would include shopping arcade services, and that the requirement derived from Praktiker would apply - namely, that for retail services, it was necessary for the goods offered for sale to be precisely specified. However, the CJEU disagreed with the GC's conclusion that the absence of such a statement would preclude any association between those shops and the goods of the mark applied for.

First, the CJEU emphasised that the line of authority derived from Praktiker concerned only applications for registration as TMs and did not concern protection of trade marks registered at the time of the Praktiker judgment (EUIPO v Cactus, C-501/15 P). As such, Tulliallan’s 3 earlier UK TMs would not be affected by the requirement for the specification of goods to which the services relate. 

Secondly, it couldn’t be inferred from Praktiker that the absence of a precise statement of goods to which the retail services covered by the earlier TM will result in the immediate rejection of the Article 8(1)(b) ground of opposition. The CJEU stated that to do so would be to prevent the earlier TM being relied on to oppose later TM applications, effectively saying that the earlier TM has no distinctive character, which cannot be possible as the earlier TM is already registered and has not been declared invalid. It would also be possible by means of a request seeking proof of genuine use of the earlier trade mark (as stated under Article 42(2) of the Regulation) to determine the precise goods covered by the services for which the earlier TM was used, and therefore take into account for the purposes of the examination of the opposition, only those goods.

Comment

Whilst decided under Regulation 207/2009, this case is still transferable in its application  in relation to Regulation 2017/1001 (the EUTMR), with the Article 8 provisions of the EUTMR mirroring the wording of Art 8 of Regulation 207/2009, and Article 47(2) EUTMR mirroring Article 42(2) of the earlier Regulation.

The case also provides useful clarification of the Intel global assessment factors. The list of factors included in paragraph 42 of Intel case are not suggested to be exhaustive, and the CJEU’s position on attractiveness in the present case makes it apparent that this is (at least) not a decisive factor to be considered in relation to whether a later mark takes or would take advantage of, or is or would be detrimental to, the distinctive character or the repute of the earlier mark.