Tales of two bunnies: Miffy’s trade mark owner prevents registration of rabbit mark for sex toys

This decision concerns an opposition to a figurative trade mark registration based on Article 8(5) EUTMR. In particular, the Board of Appeal (BOA) had to rule on the demonstration of the high reputation of the opponent's trade mark (representing the face of the character Miffy) and the risk of tarnishment posed by the applicant’s trade mark.

Two plushies representing Miffy ... and a Kat

Facts

Dick Bruna, a Dutch cartoonist, is famous for being the "father of Miffy" (Nitjntje in Dutch), a rabbit-like child character created in 1955. Mercis B.V. has been managing and protecting the cartoonist's interests since 1971, as well exploiting relevant rights.

 
On 16 December 2019, Bunnyjuice, Inc. filed an application to register a European Union figurative mark (EUTM). This application designated goods in classes 10, including “adult sexual simulation kit comprised primarily of adult sexual stimulation aids”, and 25 ("clothing, namely t-shirts, undergarments, and hats being headwear").

On 29 May 2020, Mercis B.V. filed an opposition to this application on the basis that it would infringe several of its earlier figurative marks, namely two Benelux marks, an international mark and an EU mark. While these four marks designate inter alia class 25 for 'clothing, footwear and headgear', none of them designates class 10.

 

Bunnyjuice, Inc.’s figurative mark

Basing its opposition on both Articles 8(1)(b) and 8(5) EUTMR, Mercis B.V. submitted numerous evidence to show that its trade marks had acquired a substantial reputation in the Benelux and the EU at the filling date of the contested mark.

By decision dated 24 January 2022, the Opposition Division partially upheld the opposition filed by Mercis B.V. for all the goods designated in class 25, thus rejecting their registration for this class. However, the Opposition Division refused to acknowledge the repute of the earlier mark as well as granting the opposition regarding the registration of the goods designated in class 10.
Mercis B.V. decided to appeal the decision.

Analysis

To be able to rule on the appeal filed by Mercis B.V. against the decision of the Opposition Division, the BOA divided its reasoning into several steps.

Earlier Benelux trade mark No 1 000 561: Miffy
 

First, the BOA recalled that the scope of Mercis B.V.'s appeal was to challenge the rejection of the opposition to the registration of BunnyJuice, Inc.'s trade mark for class 10, that is 'adult sexual stimulation kit comprises primarily of adult sexual stimulation aids'. In this respect, as the rejection of the registration of the contested sign for class 25 was not contested by the parties, the BOA validly confirmed the decision of the Opposition Division on this particular point.

 
In a second step, once the admissibility of the appeal confirmed and the relevant procedural rules recalled, the BOA examined the validity of the opposition filed on the basis of Article 8(5) EUTMR in relation to the BENELUX trade mark No 1 00 561, representing the face of Miffy.

 
In this respect, before any factual assessment, the BOA recalled the principle that the four conditions listed in the above-mentioned article had to be fulfilled [IPKat’s posts on this subject here, here, and here].

Since those conditions are cumulative, failure to meet one of them would result in the inapplicability of this article. On this point, the BOA expressly referred to the judgment in T 67/04, Spa-Finders.

The BOA therefore examined whether each of the four conditions were met.

 
Similarity of the signs

Regarding the examination of the similarity of the signs, the BOA recalled that the assessment of the visual, phonetic or conceptual similarity of the marks must be based on an overall assessment, having regard to the consumer of average attention (C-3/03 P, Matratzen and C-120/04, Thomson Life).

Confirming the Opposition Division's reasoning on this point, the BOA noted that both signs were purely figurative, both depicting a rabbit's head with oval ears in a cartoon style. The similar outlines included two dots and a cross for the earlier mark and a central dot in the shape of a flower or asterisk for the contested mark, a minimalist appearance, and a border. Both conceptually represent a rabbit's head. Therefore, the BOA rightly confirmed that there is an above average visual similarity and a high conceptual similarity between the two conflicting signs.

Reputation of the earlier mark

Regarding the reputation of the earlier mark, the BOA recalled that for this condition to be met, the earlier mark must be known to a significant part of the public concerned with the designated goods or services, and this reputation may not be established in the whole territory but only in a substantial part, as understood in C-375/97, General Motors. In this case, the BOA accepted Mercis B.V.'s arguments on this point, contrary to the Division's decision.

 
Mercis B.V. had produced numerous documents attesting to the commercial success of Miffy. Miffy has become a star of children's literature, illustrating numerous books and the walls of Amsterdam's Schiphol airport. Furthermore, her appearance has remained constant, her fame has surpassed that of her creator, and she has a strong presence in the world of clothing and toys marketed in brands with a strong presence in the Netherlands. This licensing programme also covers CDs, DVDs, series or musicals, video games, YouTube channels and social networks, all of which are supported by an award and a museum dedicated to Miffy. According to the BOA, those elements are further proof of Miffy's strong reputation, particularly for classes 16, 25 and 28 in the Benelux, contrary to what the Opposition Division had decided.

 
Existence of a link

As regards the existence of a link between the two signs, the relevant assessment includes the identification of the public likely to make that link. In the present case, the BOA held that “the parents, who purchase the earlier goods for and use them with their children, or adults otherwise, who buy them as a present for their friends’ or family’s children, these parents/adults being at the same time the target public of the contested goods”. The BOA rightly added that the relevant Benelux public would probably make this link even though the goods for class 10 are different from those for classes 16, 25, 28. One should remember that the existence of such link must be assessed globally taking into account all factors relevant to the circumstances of the case, as understood in C-252/07 Intel. Therefore, the degree of similarity of the two signs, the overlap of their public, the high reputation of the Miffy trade mark in the Netherlands and its distinctive character acquired through use embody the factors taken into consideration.

 
Tarnishment

Finally, the BOA found that the last of the criteria laid down in Article 8(5) EUTMR was also met. Indeed, the Board underlined that "it is likely that use of the contested mark for the goods in Class 10 concerned would devalue the image that the earlier mark has acquired amongst the public". Such a position is not surprising given that the earlier mark conveys an image of innocence, non-aggression, non-controversy and respect for the world of children. Following the reasoning in C-252/07 Intel, the BOA validly recalled, only one of the three injuries mentioned by Article 8(5) EUTMR is sufficient to retain its application. As the detriment to the repute of the Benelux trade mark was established, the Board did not attempt to identify other injuries.

It should also be noted that Article 8(5) mentions that the use must be without due cause. In the present case, Bunnyjuice, Inc. remained silent. Once again, in accordance with the aforementioned Intel case, the burden of proof lies with the applicant. It is therefore understandable that the BOA, in the absence of evidence to the contrary, presumed that the use of the contested sign would be without due cause.