Board rules on confusingly similar device marks based on copyright protection
On 21st December 2004 Italian company Guccio Gucci SpA started invalidity proceedings (R1757/2007-2) against Community Trademark Registration 2357671 G GLITZY (device), held by José Alba Fernàndez. The action was brought under Articles 52(1)(a) and (c) and 52(2)(c) of Council Regulation 40/94 (now corresponding to Articles 53(1)(a) and (c) and 52(2)(c) of Council Regulation 207/2009).
Pursuant to these provisions, a Community trademark registration shall be declared invalid where at least one of the following conditions is met:
- The registered trademark is identical or similar to an earlier trademark and to the goods or services covered by that trademark, thus causing a likelihood of confusion, including a likelihood of association with the earlier trademark.
- The registered trademark is identical or similar to an earlier trademark, but the respective goods or services claimed by the trademarks are not similar, where the earlier trademark enjoys a reputation in the Community or in the member state concerned and where the use of the later trademark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trademark.
- A non-registered trademark or another sign used in the course of trade exists and, pursuant to EU legislation or the law of the member state governing that sign:
- The rights to that sign were acquired prior to the date of application for registration of the Community trademark or the date of priority claimed for the application for registration of the Community trademark.
- The sign confers on its proprietor the right to prohibit the use of a subsequent trademark.
- The use of such trademark may be prohibited pursuant to the national law governing the protection of any other earlier right and, in particular, under a copyright.
In the light of the above, Gucci claimed to be the owner of three earlier G logos enjoying protection as unregistered trademarks in Italy, the United Kingdom and France (where the logo also enjoyed copyright protection). Gucci maintained that the G GLITZY device mark was confusingly similar to its earlier G logos and that, through the use of such trademark, Fernàndez would obtain an unfair advantage and would cause detriment to the well-known character of the earlier devices.
On 17th September 2007 the Cancellation Division issued a decision in favour of Fernàndez, holding that the invalidation request was not well founded because Gucci did not submit satisfactory evidence on the use and well-known character of the earlier G logos in Italy, the United Kingdom and France, in respect of the period before the filing date of the contested trademark, or any proof of the existence of copyright protection for the G logos in France. Although the Cancellation Division acknowledged the existence of a likelihood of confusion, the invalidity action was rejected since Gucci's exclusive rights were considered not to be enforceable against Fernàndez's trademark.
On 13th November 2007 Gucci appealed the decision. In support of its appeal, Gucci submitted further evidence regarding the use and well-known character of the earlier G logos, although most of that material referred to recent years and therefore to a period later than the filing date of the registration. However, Gucci provided clear information regarding the copyright protection given to designs by French law, including graphical stylized depictions of the shape of a letter, such as those of the earlier G logos.
The Office for Harmonisation in the Internal Market Board of Appeal issued a final decision on 30th June 2009. First, the board confirmed the judgment of the Cancellation Division on the issue of the likelihood of confusion and the assessment of evidence, considering that Gucci's G logos were not enforceable as earlier unregistered trademarks against Community Trademark Registration 2357671.
However, the board recognised that Gucci was the owner of exclusive rights in the specific design of one of the three G devices on which the invalidity action was based, deriving from the copyright protection enjoyed by that design in France. The board considered that since the creation of the design of the G logo took place before the registration was filed, Gucci was entitled to prohibit the use of Fernàndez's confusingly similar trademark pursuant to Article 52(2)(c) of Council Regulation 40/94. Accordingly, the board upheld the request for a declaration of invalidity filed by Gucci and revoked Fernàndez's registration in connection with all the covered goods.
This case is significant because the Board of Appeal recognised the existence of an earlier right according to the national law of only one EU member state (ie, France). The decision shows that the revocation of a Community registration consisting of a device (even a stylized letter) can be successfully pursued not only on the basis of the pre-existence of a registered or unregistered trademark, but also where there is an entitlement to prohibit the use of a device in one EU member state where, according to the relevant national law, such device enjoys copyright protection.
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