We often discuss EU trade mark judgments in our articles for the simple reason that South African trade mark law is quite similar to EU law and there are far more judgments in the EU. In this article, we look at two recent EU trade mark decisions, both of which involve trade marks with a reputation.
LOUIS VUITTON
An Italian individual applied to register as an EU trade mark a device (below image refers) covering goods in classes 25 and 26, which refers to clothing.
The company Louis Vuitton filed an opposition to the application – the opposition was based on an EU registration that Louis Vuitton has for its 'Monogram' trade mark, featured below.
The Opposition Division
Louis Vuitton claimed that its trade mark enjoys a reputation, and that there is a likelihood of confusion. The Opposition Division, however, differed, saying that there was little similarity between the marks. The application therefore went through to registration.
The cancellation claim
Louis Vuitton was not impressed – it applied to cancel the Italian's registration, claiming a likelihood of confusion.
The EUIPO upheld the cancellation claim. It said that a decision in opposition does not preclude a cancellation (invalidity) action. It accepted proof of use by Louis Vuitton of its Monogram mark. It accepted that the mark had a reputation for bags in class 18 and women's clothing in class 25. It found that consumers would establish a link between the marks. The fact that a clearance search had not revealed the Louis Vuitton mark did not mean that the Italian individual had due cause for using its mark
No joy for a French fashion house
This is an EU General Court judgment dealing with marks with a reputation.
The background
In 2019 Kneipp GmBH, a company that manufactures natural healing products, filed an EU trade mark application for the mark Joyful by Nature in classes 3, 4, 35 and 44 covering, inter alia, cosmetics, scented candles and marketing services. The application was opposed by a French luxury fashion house, Maison Jean Patou, on the basis of earlier rights, including an earlier registration for the mark Joy in class 3.
The claim was that an application for registration must be refused where the pending mark is identical or similar to an earlier trade mark and there is a likelihood of confusion – see Articles 8(1)(b) and (5) of the EU Trade Mark Regulation. It must also be refused where use of the pending mark would without due cause take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
The Opposition Division
The Opposition Division upheld the opposition on the basis of the reputation enjoyed by Patou in its trade mark. This decision was taken on appeal to the Board of Appeal (BOA).
The Board of Appeal
The BOA partially annulled the decision for certain services but dismissed the appeal for other goods and services. The BOA held that Article 8(5) was satisfied because the evidence submitted by Patou established a strong reputation enjoyed by the mark JOY in much of the EU for perfumery and fragrances in class 3. Kneipp took the decision on appeal to the General Court.
The General Court
The court made a number of points:
- Market share is relevant, but there is no requirement for a mark to be known by a specific percentage of the relevant public, nor for the reputation to cover all the territory. It is enough if there is a reputation in a substantial part of that territory.
- The reputation must exist at the filing date of the later mark's application for registration.
- Patou provided evidence from 2013-2017, but also documents going back to the late 1990s.
- Although the company's sales went down from 2016, this didn't mean that the reputation enjoyed by the mark had simply vanished overnight. There was a reference to a judgment involving Simca, which held that a historical mark can retain a reputation even when it is no longer used.
- Despite the fact that the evidence showed that the use of the earlier mark Joy had dropped over recent years, the mark still enjoyed a reputation. The court made the point that a reputation is something that is acquired progressively and lost gradually:
'The loss of reputation rarely happens as a single occurrence but is rather a continuing process over a long period of time, as the reputation is usually built up over a period of years and cannot simply be switched in and off...such drastic loss of reputation for a short period of time would be up to the applicant to prove.'
The court ended by saying that in the absence of concrete evidence showing that a reputation that had been acquired over many years had suddenly disappeared, the BOA had been entitled to conclude that the mark still had a reputation in November 2019.
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