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European IP Bulletin, Issue 30, March - Trade Mark
Trade Mark
7. Polo-Playing Horseman, Soaps and Abrasives
On 21 February 2006, the Court of First Instance (“CFI”) delivered its judgment in the Royal County of Berkshire Polo Club Ltd v OHIM (Case T-214/04), allowing the Polo/Lauren Co. LP to retain its proprietary rights over the sign of a ‘polo-playing horseman’ drawing a comparison between toiletries and laundry products.
On 5 June 1997, the Royal County of Berkshire Polo Club Ltd applied for registration of a mixed sign containing a verbal element with words ‘Royal County of Berkshire’ overarching the figurative element of a ‘polo-playing horseman’ for goods in Class 3 of the Nice Agreement.
The Polo/Lauren Company LP opposed the application on the ground of likelihood of confusion under Article 8(1)(b) of Trade Marks Regulation. It claimed that the trade mark applied for could give rise to a likelihood of confusion with the earlier national trade marks that it owns in Germany, Spain, Greece, Sweden and United Kingdom.
Following the rejection of the opposition, Polo/Lauren Company LP appealed to the Board of Appeal (“BA”) which held that while there was a likelihood of confusion between an earlier figurative trade mark registered in the UK for the goods consisting of cleaning preparations and other toiletries, there was no similar likelihood of confusion in respect of goods consisting of ‘bleaching preparations and other substances for laundry use, polishing, scouring and abrasive preparations’.
The Royal County of Berkshire Polo Club Ltd challenged this decision before the Court of First Instance (CFI). The CFI held that because of their position and style the words were difficult to read, making the figurative element more dominant and easily remembered by customers. The decision in Matratzen Concord v OHIM – Hukla Germany (Case T-6/01) [2002] ECR II-4335, was cited, where it was held that the component which is likely to dominate is the image of the mark which the relevant public keeps in mind with the result that all other components of the mark are negligible within the overall impression created by it.
The CFI held that the mark applied for was not distinctive and had no connection with goods in class 3 and was thus not a mark of origin identifying products from appellant’s club.
The CFI rejected the Royal County of Berkshire Polo Club Ltd’s argument that the BA’s decision gave a monopoly over the figure of polo-playing horseman, by holding that the said mark registered in the UK for goods in class 3, was highly distinctive and imaginative and, since it was arbitrary for such goods, it deserved protection against later applications for confusingly similar goods.
On the question of likelihood of confusion, the CFI took into account the global appreciation of the likelihood of confusion test as developed by Sabel v Puma (Case C-251/95) [1997] and upheld the BA’s decision in identifying the similarities between the marks based on the similarity between the goods and the visual and conceptual features of the signs depicting the game of polo.
The CFI annulled the part of the BA’s decision which allowed the registration of the Royal County of Berkshire Polo Club Ltd’s mark for ‘bleaching preparations and other substances for laundry use, and polishing, scouring and abrasive preparations’ by drawing a comparison to the soaps for which the earlier mark was registered in UK, holding that both the goods are used as housekeeping products and were thus comparable.
8. Compatative Advertising: When Do We Take Advantage Unfairly?
On 23 February 2006, the European Court of Justice (“ECJ”) handed down a judgment, in the case Siemens AG v VIPA Gesellschaft für Visualisierung und Prozeβautomatisierung mbH (Case C-59/05). The case refers to the interpretation of Article 3a(1)(g) of Council Directive 84/450/EEC concerning misleading and comparative advertising, as amended by Directive 97/55/EC. The reference for a preliminary ruling under Article 234 EC concerned the advertising engaged in by VIPA to promote certain products which were compatible with others manufactured and distributed by Siemens.
Article 2(2)(a) of Directive 84/450 provides that “comparative advertising” means “any advertising which explicitly or by implication identifies a competitor or goods or services offered by a competitor”. Article 3(a)(1)(g) of this Directive provides that “comparative advertising shall, as/or as the companies are concerned, be permitted when the following conditions are met:…..it does not take unfair advantage of the reputation of a trade mark, trade name or other distinguishing marks of a competitor or of the designation of origin of competency products.”
Siemens manufactures and distributes, among others things, programmable controllers under the name “Simatic” and introduced some time ago a system of order numbers for those products and their add-ons to identify them. The core elements of the order number concern the nature of the product and its use in the control system.
VIPA also manufactures and distributes products that are compatible with “Simatic” controllers and for which, since 1988, an almost identical identification system has been utilised. The first part of characters used by Siemens in its order numbers has been replaced by the company’s acronym “VIPA”, followed by the core elements of the order numbers of the original Siemens products unvaried. VIPA therefore distributes components corresponding to the original Siemens product carrying order numbers identical to those used on the Siemens products save for the first part of such order numbers which have been replaced with “VIPA”. On VIPA’s products and catalogues it is indicated, among other things “The order numbers correspond to those of Siemens programme modules”.
Siemens brought an action against VIPA alleging that the latter was taking unfair advantage of the reputation of its products. The first instance decision was favourable to Siemens but on appeal the decision was set aside and Siemens filed an appeal for “Revision” with the Bundesgerichtshof.
As to resolve the dispute it was necessary to interpret Directive 84/450/EEC, the Bundesgerichtshof decided to stay the proceedings and referred the following questions to the ECJ for a preliminary ruling:
- When an advertiser, using the identical form of the core elements of a distinguishing mark of a competitor, which is known in trade circles, refers to those identical elements in advertising, is the reputation of an other distinguishing mark within the meaning of Article 3a(1)(g) of Directive 84/450/EEC taken advantage of unfairly?
- In answering the question above, is the benefit to the advertiser and the consumer procured by the adoption of the identical system a relevant factor?
The Court pointed out that, according to the settled case-law, when assessing whether Article 3(a)(1)(g) has been observed, it is necessary to consider recital 15 to Directive 97/55, which affirms that there is no breach of the right to a mark when using a competitor’s mark if such use complies with the conditions laid down by Directive 84/450 since the aim of such use is just to distinguish between the products and services of the advertiser and those of his competitor by highlighting the differences objectively. An advertiser cannot be regarded as taking unfair advantage of the reputation of a competitor’s distinguishing marks if effective competition on the relevant market is conditional upon a reference to these marks.
Additionally, the Court stated that VIPA, by adopting the core elements of Siemens’ order number system, informs the public that the relevant products are technically equivalent to the Siemens products. However, it is necessary to determine whether the adoption of the core element of the Siemens order number system might cause the public at whom VIPA’s advertising is directed to associate Siemens’ products with the competing supplier, since the public could associate the reputation of Siemens’s products with the products distributed by the competing supplier. The Court stated that the relevant public is a specialist public which is not likely to associate Siemens’s reputation with VIPA’s products. Moreover, the Court added that the adoption by VIPA of its company’s acronym to distinguish the products and the statements in its catalogues allows for a distinction to be drawn between the different entities identities and the origins of their respective products. It is also clear that the use of the core element of the order number is functional as it refers to the product’s nature, but also its utilisation in the control system.
As to whether the benefit of the consumer and the advertiser procured by adopting a distinguishing mark in identical form should be taken into consideration, the Court stated that if VIPA used a different core element to identify its products, a user would be required to look at comparative listings to check the corresponding numbers of the goods sold by Siemens and this would be disadvantageous both to VIPA and consumers and could also have restrictive effects on the competition in the market.
Eventually, in light of the foregoing considerations, the Court held that Article 3a(1)(g) in question must be interpreted as meaning that by using in a supplier’s catalogues the core elements of a competitor’s distinguishing mark, known in trade circles, the reputation of that distinguishing mark is not taken advantage of unfairly by the supplier.
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