The similarity between trademarks must necessarily exist so that we can argue that a trademark has taken unfair advantage of the distinctive character or the repute of an earlier trademark.
This concept is clearly affirmed by the law, as well as in the judgment of the EU General Court of 16 July 2014 (Case T-36/13), at issue here.
This judgment arises from the following case:
On April 26, 2010 the applicant filed a Community trademark application (now European Union trademark application) for the following trademark in classes 3, 14, 18 and 35:
On September 29, 2010 the opponent filed an opposition against the above mentioned application and based the opposition on the following earlier trademarks: Community Registration No 7008477, registered in classes 3, 9, 14, 16, 18, 25, 28, 35 and 41 and Italian trademark No. 782515, registered for goods in classes 25 and 28
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The opposition was based on
confusion between trademarks due to identity or similarity of the marks in comparison and identity or similarity of the goods or services covered by the trademarks
(article 8, paragraph 1, letter b) of the UTM Regulation No. 2017/1001)
impossibility of registration if the mark is identical or similar to an earlier trademark also for not similar goods or services where, in the case of an earlier EU trademark, the trademark has a reputation in the Union and, in the case of an earlier national trademark, the trademark has a reputation in the Member State concerned and where the use without due cause of the trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark
(Article 8, paragraph 5 of the same Regulation)
The Opposition Division (decision confirmed by the Board of Appeal) rejected the opposition and – in relation to the first ground of opposition – considered dissimilar the trademarks in comparison as only characterized by “a certain visual similarity” and – in relation to the second ground of the opposition – held that the opponent did not provide any evidence to establish that trademark applied for took unfair advantage of the reputation of the earlier marks.
In this judgment the EU General Court confirmed the decisions previously issued by the Opposition Division and the Board of Appeal.
With regard to the ground based on Article 8, paragraph 1, letter b) of the EU Trademark Regulation, the Court considers the marks in comparison are not similar on any of the relevant points, therefore they cannot be regarded as similar.
With regard to the ground based on Article 8, paragraph 5 of the Council Regulation n. 207/2009, the Court (paragraph 83 and 84 of the Decision) states how
“the broad protection given to the earlier mark under Article 8, paragraph 5, presupposes the existence of some conditions. Firstly, the earlier mark with a reputation must be registered. Secondly, the latter and the trademark applied for must be identical or similar. Third, in the case of an earlier EU trademark, the trademark must have a reputation in the E.U. and, in the case of an earlier national trademark, the trademark must have a reputation in the Member State concerned. Fourth, the use without due cause of the trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark. As these conditions are cumulative, the lack of one of them is sufficient to render inapplicable the provision”.
In light of the above, and considering that in the present case the marks at issue are not similar, the Court concludes that
“since it is not satisfied the second condition set out above, we must reject the second ground of opposition without examining whether the opponent has filed elements able to establish that the use of the mark takes unfair advantage of the reputation of the earlier mark”.