M&A IP Blog

May 17, 2018

 TSA Lock: Quality Of Evidence Over Quantity

The General Court of the European Union had recently decided on a case involving two American based companies, the first Safe Skies, the other, Travel Sentry Inc. The former is a New York Based company in the business of security products, including luggage straps, TSA liberty bell, flower power, camouflage, aero, patriot locks and other related products; and latter, is the company that develops and licenses standards used in travel security, including a standard for luggage locks that can be opened by aviation security agencies such as the Transportation Security Administration.

The contested trade was the then Community Trade Mark (now European Union Trade Mark) No.: 4 530 168; “TSA LOCK” registered in Class 6, 18 and 20, filed on July 7, 2005, and registered on July 10, 2006.

The Application Of Invalidity

The dispute began in April 2014, when Safe Skies applied to then Office for Harmonisation in the Internal Market (now European Union Intellectual Property Office) for a declaration of invalidity against the “TSA LOCK” trade mark. Safe Skies argued that the “TSA LOCK” trade mark was descriptive, non-distinctive, has become part of everyday language and is generic, misleading, and that “TSA” is the official abbreviation of the Transport Security Authority.

The case files at the European Union Intellectual Property Office indicates that Safe Skies had filed vast amounts of evidence in support of its declaration of invalidity, but nonetheless, the Cancellation Division rejected the declaration of invalidity.

It is standard procedure, in invalidity proceedings, that the Cancellation Division will not carry out its own research, but will limit itself to analysing facts, arguments and evidence submitted by the parties. Notwithstanding, this does not preclude the Cancellation Division from taking into consideration facts that are well known, which are likely to be known by anyone or can be learned from generally accessible sources. Furthermore, as the case was for a declaration of invalidity, the facts and arguments must date from the period when the trade mark application was filed, which was July 7, 2005, but any facts relating to a subsequent period might also allow for conclusions to be drawn pertaining to the situation at the time of filing.

The Cancellation Division decided that the vast amounts of evidence submitted by Safe Skies was insufficient to support each and every ground of invalidity raised in its declaration of invalidity. Safe Skies had failed to show compelling evidence that the “TSA LOCK” trade mark fell foul of each of the grounds of invalidity claimed, at the time of the date of filing of the trade mark, which was July 7, 2005.

A substantive amount of the arguments related to the Transport Security Administration and/or the abbreviation relating to it, TSA. As a result, the Cancellation Division indicated that the average consumer in the Europe is not necessarily aware of the specific government agencies outside of the European Union, such as the TSA, but the average consumer might be aware of abbreviations which appear regularly in the mass media, such as, NASA, FBI and CIA.

The Appeal

Adamant that the trade mark was susceptible to be declared invalid, and that the Cancellation Division had made a wrong decision, Safe Skies lodged an Appeal on February 2016 with the Boards of Appeal. Once again, Safe Skies filed additional evidence in its Appeal, in an attempt to indicate that the term “TSA LOCK” was purely deceptive in 2016.

The Boards of Appeal indicated that the Cancellation Division did not make a wrong decision, and that the vast majority of the evidence concerned a point of time that was after the relevant date, which was the date of filing, and nothing allowed for an inference that, at the relevant date, the “TSA LOCK” trade mark was either descriptive of its relevant goods or otherwise non-distinctive. The Boards of Appeal also noted, amongst others, that the fact that major airlines such as Lufthansa need to answer the question “what is the TSA?” in 2015, is indicative of the fact that even at this date, there is a need to explain to the relevant public what these abbreviations signify in the context of international level.

Finally, it is generally accepted that there is no need for the Cancellation Division to explicitly refer to every piece of evidence filed, nor is the Boards of Appeal under any obligation to do so. None of the evidence, including those filed upon appeal, indicated that at the relevant time, the relevant public in the European Union would have perceived the “TSA LOCK” trade mark as being purely descriptive or otherwise lacking distinctive character.

Safe Skies ultimately lost the appeal as the Boards of Appeal correctly dismissed the appeal.

The Decision At The General Court

Safe Skies took a final stab at the issue and applied to the General Court of the European Union to annul the decision at the Cancellation Division.

At this juncture, Safe Skies limited its arguments to three grounds, that the “TSA LOCK” trade mark was descriptive, non-distinctive, and it was a misleading sign capable of deceiving the public.

Once again, Safe Skies reproduced the evidence submitted in the earlier stages of the dispute, and in addition, submitted new evidence for the first time before the General Court. The General Court indicated that its function is to review the legality of decisions of the Boards of Appeal, and it was not the function of the General Court to review the facts, in light of documents or evidence produced for the first time before it. The review of the contested decision was to be carried out, in light solely of the evidence which was produced during the proceedings as it appears in the European Union Intellectual Property Office case files.

The General Court laid down the following:-

(i) The distinctive character and/or descriptive nature of a trade mark must be assessed by reference to the goods and/or services in respect of which registration is sought, and, reference to the relevant public’s perception of the trade mark at the time of the date of filing. The relevant public here is reasonable well informed and reasonably observant and circumspect.

(ii) The distinctiveness and/or descriptiveness of a trade mark may be assessed in part, but must, depend on an appraisal of the trade mark as a whole. The mere fact that each of those terms and/or elements, considered separately, is devoid of distinctive character does not mean that their combination cannot present such a character.

In both instances, the General Court decided that the Boards of Appeal was correct in its decision.

In addition, the General Court found that the term “TSA LOCK” cannot be misleading since Safe Skies had failed to prove that the term “TSA Lock” was understood in the relevant territory, at the date of filing of the “TSA LOCK” trade mark, as a reference to the American Transportation Security Administration.

Cause And Effect

The result at the General Court was unsurprising when the action was dismissed in its entirety. A review of all the three cases, the evidence, the arguments submitted by Safe Skies, and the decisions, was unequivocal in that Safe Skies had failed to prove that the “TSA LOCK” trade mark was capable of being declared invalid pursuant to the grounds that it had raised.

It was apparent that Safe Skies did expand significant amount of time collating evidence for all the stages, the evidence submitted was, vastly inadequate to show that the “TSA LOCK” trade mark was capable of being declared invalid, at the time of its filing date. On more than one occasion, the various courts had explicitly repeated these sentiments.

Furthermore, it is apparent that Safe Skies had failed to consider that the average consumer within the European Union, is still, not necessarily familiar with the names of specific agencies prevalent outside of the European Union. Presumably, in the converse, just like the average consumer within the United States would not be familiar with specific European Union agencies.

All this time and financial costs incurred by Safe Skies have gone to nought. The lesson to take from this decision, and the dispute that began in 2014, is that, it does not matter how much evidence is submitted. As a party initiating invalidity proceedings, you have to ensure specific pre-requisites, which adhere to the EUTMR and settled case law, in order to ensure that the grounds of invalidity you are claiming will be successful.

Inundating the applicant with heaps of irrelevant evidence will only get you so far, and most of all, it will cost you significant time and financial costs, which is better expanded in actually collating quality evidence.

The Device Of Two Parallel Stripes: The Long Drawn Out Battle

The European Union General Court had recently decided (here) that the Boards of Appeal of the European Union Intellectual Property Office had correctly rejected the application for European Union Trade Mark Application No.: 8 398 141, overturning the initial decision at the Opposition Division of the European Union Intellectual Property Office.

The conclusion of this matter has been a long drawn out process of thug and war between adidas AG and Shoe Branding Europe BVBA, which began in July 2009 when Shoe Branding Europe BVBA filed an application to register the European Union Trade Mark Application No.: 8 398 141 in Class 25 for “footwear”, a position mark represented as:-

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Three parallel equally spaced stripes applied to footwear, the stripes positioned on the footwear upper in the area between the laces and the sole.

The Early Stages

Thereafter, in September 2010, adidas AG filed an opposition at the European Union Intellectual Property Office, citing that Shoe Branding’s trade mark application was confusingly similar, and that use of the application mark will take advantage of, or be detrimental to, the distinctive character or repute of the earlier marks of adidas AG. The opposition was eventually rejected by the Opposition Division of the European Union Intellectual Property Office.

Subsequently on July 2, 2012, adidas AG appealed the opposition decision but to no avail. The Boards of Appeal agreed with the Opposition Division and dismissed the appeal on the grounds that:-

“the trade marks at issue were different overall and that that fact was sufficient, first, to rule out any likelihood of confusion on the part of the relevant public within the meaning of Article 8(1)(b) of Regulation No 207/2009, and secondly, to make it unlikely that the same public would establish a link between the trademarks at issue, and, consequently, that any of the types of injury referred to in Article 8(5) of that regulation would occur (‘the decision of 28 November 2013’)”

Unsatisfied with the decision at the Boards of Appeal, adidas AG went to the General Court of the European Union and appealed. It was at this stage that adidas AG first tasted victory, when the General Court annulled the decision of the Boards of Appeal of November 28, 2013 on the grounds that:-

“the Board of Appeal had wrongly concluded that there was no similarity whatsoever between the marks at issue and that error of assessment had distorted the Boards of Appeal’s assessment as to whether there was, on the part of the public, likelihood of confusion or, a fortiori, a likelihood that a connection would be made between the marks at issue”

The reaction from Shoe Branding Europe BVBA was to appeal to the European Court of Justice, but it failed when the Court of Justice dismissed its appeal.

The cause and effect of annulling the judgment and of the order on the appeal, the Second Board of Appeal of the European Union Intellectual Property re-examined the appeal initiated by adidas AG, against the decision of the Opposition. It was at this juncture that adidas AG, tasted victory again. By decision dated June 8, 2016, the Board of Appeal upheld that appeal and allowed the opposition on the basis of Article 8(5) of Regulation No 207/2009. In particular, it considered that, given a certain degree of similarity between the marks at issue, the identity between the goods covered by those trade marks and the high reputation of the earlier mark, there was a likelihood that the relevant public might establish a link between the marks at issue and that the use of the mark applied for could take unfair advantage of the reputation of the earlier mark, without that use being, in the case at hand, justified by due cause.

It was at this juncture that Shoe Branding Europe BVBA appealed to the European Union General Court, where the General court concurred with the Boards of Appeal.

Reputation Of Adidas

This judgment noted that adidas AG had furnished comprehensive evidence that showed it held a considerable amount of market share, through surveys, within different European countries, and that seventy percent of its goods sold bears the earlier mark. Adidas AG also furnished evidence of their advertising expenditure, and showed significant amount of sponsorship activity.

All this evidence went to show that the general public had associated its mark with footwear.

Furthermore, adidas AG provided a slew of decisions from various national courts which decided that adidas AG had reputation in regards to the three parallel stripes.

Finally, It was apparent that Shoe Branding BBVA’s ultimate flaw was comparing its brand to adidas AG in a 2007 promotional campaign in Spain and Portugal stating “two stripes are enough”. Shoe Branding BBVA did not dispute the use of the slogan, and the General Court stated that “using such a slogan sought to call to mind the earlier mark, known to the consumer by virtue of its reputation”.

The success of adidas AG in this matter shows the commitment that it has invested, in this case and others, in protecting its well known three parallel stripes mark, in the market.

The Early Stages
Thereafter, in September 2010, adidas AG filed an opposition at the European Union Intellectual Property Office, citing that Shoe Branding’s trade mark application was confusingly similar, and that use of the application mark will take advantage of, or be detrimental to, the distinctive character or repute of the earlier marks of adidas AG. The opposition was eventually rejected by the Opposition Division of the European Union Intellectual Property Office.

Subsequently on July 2, 2012, adidas AG appealed the opposition decision but to no avail. The Boards of Appeal agreed with the Opposition Division and dismissed the appeal on the grounds that:-
“the trade marks at issue were different overall and that that fact was sufficient, first, to rule out any likelihood of confusion on the part of the relevant public within the meaning of Article 8(1)(b) of Regulation No 207/2009, and secondly, to make it unlikely that the same public would establish a link between the trademarks at issue, and, consequently, that any of the types of injury referred to in Article 8(5) of that regulation would occur (‘the decision of 28 November 2013’)”

Unsatisfied with the decision at the Boards of Appeal, adidas AG went to the General Court of the European Union and appealed. It was at this stage that adidas AG first tasted victory, when the General Court annulled the decision of the Boards of Appeal of November 28, 2013 on the grounds that:-
“the Board of Appeal had wrongly concluded that there was no similarity whatsoever between the marks at issue and that error of assessment had distorted the Boards of Appeal’s assessment as to whether there was, on the part of the public, likelihood of confusion or, a fortiori, a likelihood that a connection would be made between the marks at issue”

The reaction from Shoe Branding Europe BVBA was to appeal to the European Court of Justice, but it failed when the Court of Justice dismissed its appeal. The cause and effect of annulling the judgment and of the order on the appeal, the Second Board of Appeal of the European Union Intellectual Property re-examined the appeal initiated by adidas AG, against the decision of the Opposition. It was at this juncture that adidas AG, tasted victory again. By decision dated June 8, 2016, the Board of Appeal upheld that appeal and allowed the opposition on the basis of Article 8(5) of Regulation No 207/2009. In particular, it considered that, given a certain degree of similarity between the marks at issue, the identity between the goods covered by those trade marks and the high reputation of the earlier mark, there was a likelihood that the relevant public might establish a link between the marks at issue and that the use of the mark applied for could take unfair advantage of the reputation of the earlier mark, without that use being, in the case at hand, justified by due cause.

It was at this juncture that Shoe Branding Europe BVBA appealed to the European Union General Court, where the General court concurred with the Boards of Appeal.

Reputation Of Adidas
This judgment noted that adidas AG had furnished comprehensive evidence that showed it held a considerable amount of market share, through surveys, within different European countries, and that seventy percent of its goods sold bears the earlier mark. Adidas AG also furnished evidence of their advertising expenditure, and showed significant amount of sponsorship activity. All this evidence went to show that the general public had associated its mark with footwear.

Furthermore, adidas AG provided a slew of decisions from various national courts which decided that adidas AG had reputation in regards to the three parallel stripes. Finally, It was apparent that Shoe Branding BBVA’s ultimate flaw was comparing its brand to adidas AG in a 2007 promotional campaign in Spain and Portugal stating “two stripes are enough”. Shoe Branding BBVA did not dispute the use of the slogan, and the General Court stated that “using such a slogan sought to call to mind the earlier mark, known to the consumer by virtue of its reputation”.

The success of adidas AG in this matter shows the commitment that it has invested, in this case and others, in protecting its well known three parallel stripes mark, in the market.

Board Of Appeal Decision Annulled: Has The General Court Expanded The Link Of Complementarity?

The General Court, in its Judgment in Case No.: T-831/16, dated April 24, 2018 (Kabushiki Kaisha Zoom v European Union Intellectual Property Office) has annulled a decision of the Board of Appeal of EUIPO.

May 26, 2018

LEEDSWORLD

Leedsworld, Inc. (“Leedsworld”) had filed an application to register a European Union Trade Mark (“EUTM”) at the European Union Intellectual Property Office (“EUIPO”) on April 24, 2013. The EUTM Application No.: 11 766 111, “ZOOM” (the “Contested Mark”) sought registration for ‘Cord and cable management devices, namely, holders, wraps, brackets and clips for containing and organizing audio, computer, connection, electrical, electronic, power, printer, stereo and video cables; carrying cases for electronic equipment, namely, computers, cell phones, cameras, PDAs, electronic tablets, media players and handheld devices; stands for electronic equipment, namely, computers, cell phones, cameras, PDAs, electronic tablets, media players and handheld devices; and battery chargers and power banks; none of the aforementioned products relating to music technology products’ under Class 9.

The Contested Mark was subsequently published on June 11, 2013.

On September 10, 2013, Kabushiki Kaisha Zoom (“KKZ”) filed a notice of opposition pursuant to Article 41 of Regulation No.: 2017/2009 (now Article 46 of Regulation 2017/1001), and it was based on the KKZ’s earlier marks, EUTM No.: 227 157 “ZOOM”, and EUTM No.: 4 888 749 .

KKZ raised Article 8(1)(b) and Article 8(4) and (5) of Regulation No 207/2009 (now, respectively, Article 8(1)(b) and Article 8(4) and (5) of Regulation 2017/1001) . Consequently, as KKZ’s earlier trade marks were more than five years old at the time of the opposition, Leedsworld requested prove that genuine use had been made of the earlier marks.

The Opposition Division upheld the opposition in part in respect of some of the specifications in Class 9, namely, ‘Carrying cases for electronic equipment, namely, media players and hand-held devices; stands for electronic equipment, namely, media players and hand-held devices; none of the aforementioned products relating to music technology products’.

Notwithstanding, the application for registration of the Contested Mark was upheld for the remaining specifications as they were found to be different from the registered specifications of the earlier marks of KKZ, in which genuine use had been established.

The Appeal at the EUIPO 

On June 29, 2015, KKZ filed a notice of appeal at the EUIPO against the decision of the Opposition Division

By decision of September 7, 2016, the Fifth Board of Appeal of EUIPO dismissed the appeal.

(i) The Board of Appeal held that the evidence submitted indicated sales of goods covered by the earlier marks during the relevant period (June 11, 2008 to June 10, 2013). Even though the evidence did not indicate significant volume of sales, it established continuous promotion of the goods to a specialist audience.

The Board of Appeal held that proof of use of KKZ’s earlier marks had been adduced only in relation to:-

• ‘handy recorders’, that is, hand-held audio/sound recording devices;
• ‘recording devices for live performance recording, interfacing, controlling and sampling’ and;
• ‘guitar effects devices (stomps, pedals) including acoustic, bass and electric guitars’.

(ii) The Board of Appeal held that KKZ had failed to establish genuine use relation to:-

• ‘photographic machines and apparatus; cinematographic machines and apparatus’;
• ‘portable communicating apparatus’, ‘power distribution and control machines apparatus (AC adapter) and electric wire and cable’ or ‘batteries and cells’.

(iii) The Board of Appeal held that the evidence submitted was not sufficient to establish enhanced distinctive character, or reputation under Article 8(1)(b) or Article 8(5) of Regulation No.: 207/2009, respectively.

(iv) The Board of Appeal upheld the Opposition Division’s analysis as regards the existence of a likelihood of confusion in respect of the goods found to be similar, given the similarity between the marks at issue, the nature of the relevant public, which includes the general public deemed to display an average degree of attention, and the comparison of the goods, in particular in terms of their possible complementarity.

The General Court Decision

On further appeal to the General Court, KKZ sought from the General Court to:-

(i) Annul the decision of the Board of Appeal;
(ii) Reject the application for registration of the Contested Mark for goods in Class 9 in its entirety; and
(iii) Order the EUIPO to pay the costs.

KKZ’s Pleading

KKZ relied on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No.: 207/2009, which consist of four parts:-

(i) That the Board of Appeal made an error of assessment in regards to the proof of genuine use of the earlier marks in respect of several categories of goods;

(ii) On the basis of that error of assessment, the Boards of Appeal wrongly restricted the scope of protection conferred by the earlier marks;

(iii) The Board of Appeal incorrectly assessed the similarity of the goods in question; and

(iv) The overall likelihood of confusion was also incorrectly assessed.

Reassessment of Evidence of Genuine Use

The General Court indicated that “the evidence of genuine use of the earlier marks submitted by the [KKZ] must be assessed in order to examine the categories of goods in respect of which the Board of Appeal found that such use had not been demonstrated”.

In reassessing the evidence of genuine use submitted by KKZ, the General court found that the Board of Appeal did not correctly assess the genuine use of the earlier mark in respect of ‘power distribution or control machines and apparatus’, and ‘electric wire and cable’.

The Boards of Appeal had made an error by not taking into account all the AC adapters and USB, AV and HDMI cables marketed by KKZ. The evidence submitted support the conclusion that AC adapters and USB and AV cables were not only sold in optional accessory packs, but were also supplied with the KKZ’s devices, specifically with the ‘handy recorders’

Reassessment of Comparison of Goods

Thereafter, a new comparison of the goods had to be made, taking into consideration all of the goods which proof of genuine use of the earlier marks had been adduced, namely:-

• Portable recorders, otherwise known as ‘hand-held audio/sound recording devices’;
• ‘recording devices for recording, interfacing, controlling and sampling live performances’;
• ‘guitar effects devices (stomps, pedals) including acoustic, bass and electric guitars’;
• AC adapters, as a subcategory of ‘machines and apparatus for electric control or distribution’; and
• USB and AV cables which must be assimilated to the category of ‘electric cables’.

(i) ‘Cord and cable management devices, namely, holders, wraps, brackets and clips for containing and organizing audio, computer, connection, electrical, electronic, power, printer, stereo and video cables’ covered by the Contested Mark.

• KKZ produced evidence detailing the operation of its sound recording devices and extracts from catalogues, showing that they operate in an environment with other equipment such as computers, mixing desks, microphones, acoustic screens, and even musical instruments. The examination of that evidence demonstrates that the connections between all these units are made through wires and cables, whether jack, XLR, USB or AV cables or power cables.

• As KKZ had indicated, the large number of wires and cables, which can be as many as 11 at the same time for the same piece of equipment, makes a cable management system very useful. The cord and cable management devices covered by the mark applied for are intended for wires and cables, particularly audio, computer, connection, electrical, electronic, power, printer, stereo and video cables, which are identical or similar to those required for the operation of the applicant’s devices. It is therefore appropriate to consider that the ‘cord and cable management devices’ are important in the use of equipment marketed by the applicant where a high number of cables is necessary for their use.

• The General Court considered, in view of their complementary nature, the Board of Appeal erred in its assessment of the similarity of ‘cord and cable management devices, namely, ‘holders, wraps, brackets and clips for containing and organizing audio, computer, connection, electrical, electronic, power, printer, stereo and video cables’, covered by the Contested Mark, and the goods marketed by KKZ under the earlier marks, and that it wrongly found there to be no similarity.

(ii) ‘Carrying cases for electronic equipment, namely, computers, cell phones, cameras, PDAs, electronic tablets, media players and handheld devices; stands for electronic equipment, namely, computers, cell phones, cameras, PDAs, electronic tablets, media players and handheld devices’ covered by the Contested Mark.

• Carrying cases and stands are goods which are useful only in so far as they are used as accessories to other products, the former are mostly composed of materials providing protection against impact, being designed to protect the apparatus which they contain during transport, the latter being intended to fix or stabilize a device of a certain weight in order to facilitate or allow its use. They are therefore neither comparable nor similar to the products covered by the earlier marks in respect of which genuine use has been shown.

They can, however, be connected with those products in the context of a link of complementarity owing to the close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking.

• The products for which the carrying cases and stands are intended, as stated in the list of goods referred to in the trade mark application, are electronic or computer products, specifically ‘computers, cell phones, cameras, PDAs, electronic tablets, media players and handheld devices’, of closely comparable size, including as regards the computers and cameras. The intended use of the carrying cases and stands appear to be identical with regard to all these products, namely to protect them, as regards the carrying cases, or fix and stabilize them, as regards the stands.

• Board of Appeal’s decision to treat the carrying cases and the stands differently according to whether they are intended for ‘media players and portable devices’ or ‘computers, cell phones, cameras, PDAs, electronic tablets’ appears to be arbitrary and based on an irrelevant distinction. Indeed, those devices, which all belong to the category of electronic devices, are homogeneous in terms of the materials and components with which they are made. The carrying cases and stands are intended to fulfil the same functions with regard to those devices. In those circumstances, since the Board of Appeal acknowledged the existence of a link of complementarity leading to a recognition of similarity between the carrying cases and stands intended for ‘media players and portable devices’, on the one hand, and portable recorders on the other hand, it should also have acknowledged the existence of such a link with those cases or supports when they are intended for ‘computers, cell phones, cameras, PDAs, electronic tablets’.

• The Board of Appeal erred in its assessment of the similarity of the goods at issue by acknowledging only a partial similarity when, taking into account the complementarity with the applicant’s goods, that similarity should have been recognized in respect of all the categories ‘carrying cases for electronic equipment, namely, computers, cell phones, cameras, PDAs, electronic tablets, media players and handheld devices’ and’ stands for electronic equipment, namely, computers, cell phones, cameras, PDAs, electronic tablets, media players and handheld devices’ covered by the Contested Mark.

(iii) ‘Battery chargers and power banks’ covered by the Contested Mark.

• Appropriate to assess the similarity of ‘battery chargers and power packs’, covered by the Contested Mark, and AC adapters, as a subcategory of ‘power distribution apparatus’, as well as ‘power cables’.

• The intended use of such goods, particularly AC adapters in respect of products marketed by the applicant, consists in supplying electricity to electronic devices either directly or through batteries. In this respect, it should be noted, as the applicant submits, that AC adapters can also be used to supply power to rechargeable batteries, which is akin to charging a battery. The nature, intended purpose and method of use of the goods in question, if they are not completely identical, are nevertheless very close. In those circumstances, contrary to the findings of the Board of Appeal, it must be held that there is similarity between the goods covered by the marks at issue.

The General Court found that the Board of Appeal made an error of assessment in confining itself to finding a partial similarity of the goods covered by the marks, when it must be found that there is similarity with all the goods covered by the Contested Mark, on the grounds of either identity of the goods in question, or similarity resulting from a link of complementarity.

Reassessment of Global Assessment

The General Court held, as regards the comparison of the goods of the Contested Mark and the earlier marks which had shown genuine use, those goods are similar on the grounds of either identity or a link of complementarity. Furthermore, due to the degree of similarity between the marks, and the goods covered by them, there is a likelihood of confusion, owing to the fact that the relevant public might believe the goods come from the same undertaking or from economically linked undertakings.

Consequently the General Court indicated, it is necessary to uphold the KKZ’s claim that the Board of Appeal decision should be annulled in so far as the Board of Appeal dismissed the appeal brought against the decision of the Opposition Division by which it had upheld the opposition only in part.

Comments

Pleadings

It was apparent that KKZ’s pleading to the General Court was succinct, but nevertheless a hard-line approach. It was a single plea, divided into four parts, and failure of any one part– particularly the first or second – would have definitely defeated KKZ’s appeal.

The manner in which the four part single plea was structured appeared to oblige the General Court to reassess the evidence of proof of genuine use of the earlier marks, and ascertain the scope of protection of the earlier marks. This was paramount towards KKZ’s success at the General Court.

The Methodical General Court

Was the General Court obliged to reassess the evidence of proof of genuine use of the earlier marks, and ascertain the scope of protection of the earlier marks due to KKZ’s single plea, or was it under an obligation to do so?

Regardless, the approach undertaken by the General Court, when assessing the decision of the Board of Appeal of the EUIPO, was unparalleled. It had exercised its utmost diligence when reassessing different aspects of the decision – as indicated above – when attempting to ascertain whether the Board of Appeal had committed an error of assessment.

This clearly shows that the General Court does not take annulling a decision from the Board of Appeal lightly.

Was there really an extension of complementarity?

Gleaning from the factual matrix, it appears that this case is unique to its facts.

First and foremost, the opposition was based on earlier marks which required KKZ to show genuine use. KKZ’s ability to show genuine use of its earlier marks for its registered goods, demonstrated to the courts, in actuality, the manner the goods are sold to the consumers.

Second, the goods which KKZ offered to consumers were targeted to a specialist audience. The implication is that these are not ordinary simple electronic devices. This was corroborated when KKZ indicated that there can be as many as eleven wires or cables, attached at the same time, for the same piece of equipment.

Finally, due to the nature of the goods of the earlier marks, how the goods are packaged and sold, and the goods offered by KKZ, the apparent “extension” of complementarity, does not seem like an extension at all and should be limited to the facts of this particular case.

June 20, 2018

FIFA World Cup Series: Messi’s Trade Mark Victory

In less than two weeks, the 2018 FIFA World Cup will kick-off in Russia, and the qualified teams are nearing the completion of their preparations to begin the tournament.

In the spirit of football grandest stage, Lionel Messi, the 2014 World Cup Golden Ball winner and 2014 World Cup runner-up with Argentina, appears well prepared, having secured a trade mark victory over the European Union Intellectual Property Office (“EUIPO”).

Messi’s Trade Mark Application

Messi had applied to register his figurative trade mark at the EUIPO on August 8, 2011. His registration was met with an opposition by a Spanish cycling gear manufacturer, Massi. Massi allegedly claimed that, there exists a likelihood of confusion between Messi’s figurative trade mark application, and its earlier trade marks. The Opposition Division of the EUIPO agreed with Massi, and Messi’s figurative trade mark application was refused.

Messi proceeded to appeal the findings of the Opposition Division of the EUIPO, at the Boards of Appeal of the EUIPO. The Boards of Appeal of the EUIPO decided that there was a likelihood of confusion on the consumer’s part. The decision was based on an overall assessment of the likelihood of confusion that the goods applied for are mostly identical, the trade mark applied for has been found to be similar, whilst taking into account the principle of imperfect recollection and the principle of interdependence of the facts of confusion.

Unsatisfied with the decision of the Boards of Appeal of the EUIPO, Messi lodged an appeal with the General Court. This was where Messi ultimately prevailed as the General Court concluded that the Board of Appeal of the EUIPO had erred in its decision.

Judgment of the General Court

The General Court indicated that it was wrong for the Boards of Appeal to consider that:-

(i) Messi only enjoys popularity among the public interested in football and in sports in general. Messi is a public figure, known to most reasonably attentive or insightful people who read the press, watch the news on television, go to the movies or listen to the radio, media in which they can see it and in those who usually talk about him.

(ii) That it was possible to assume that this conceptual association would not be established by the relevant public as a whole. Indeed, instead of assuming that the relevant public would not appreciate that difference, the Board of Appeal should have examined whether a significant part of the relevant public could establish a conceptual association between the term ‘messi’ and the surname of the famous player of football.

(iii) Finally, it must be borne in mind that the goods designated by the respective brands could be susceptible a risk of confusion, even if they are not limited to football. It seems unlikely that the average consumer of sportswear who are reasonably attentive, informed and insightful does not directly associate the term ‘Messi’ with the surname of the famous footballer, but rather associate an apparently Italian brand with its sound.

Having secured this victory after a seven-year battle, will Lionel Messi be able to inspire his nation to the pinnacle of 2018 FIFA World Cup Glory?