Three CJEU cases from 2018-19: Messi, Mitsubishi and Koton - James Nurton, Lextel Partners Editorial consultant, MARQUES - Fordham IP ...
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Three CJEU cases from 2018-19:
Messi, Mitsubishi and Koton
James Nurton, Lextel Partners
Editorial consultant, MARQUES
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MESSI v MASSI (Case T-554/14, April 26 2018)
What is the power of fame?MESSI v MASSI (Case T-554/14, April 26 2018) • EUTM application filed on August 8 2011 • - Class 9: Rescue apparatus and instruments • - Class 25: Clothing, footwear, headgear • - Class 28: Gymnastic and sporting articles not included in other classes • Opposition filed on November 23 2011 (MASSI) • - Class 9: Helmets for cyclists, protective clothing against accidents, personal protective devices against accidents • - Class 28: Bicycle gloves, protections for the shoulders, elbows and knees
MESSI v MASSI (Case T-554/14, April 26 2018)
Board of Appeal EU General Court
(R 1553/2013-1) (T-554/14)
Visual similarity þ þ
Phonetic similarity þ þ
Conceptual þ ý
similarityMESSI v MASSI (Case T-554/14, April 26 2018)
Board of Appeal (para 27):
“In the Board’s assessment, based on the parties’ arguments (see Article 75 and 76
CTMR), no clear conceptual content will be attributed to the marks by reasonably
observant consumers except, perhaps, that they would be associated to Italian-
sounding and looking words or names. In fact, ‘MESSI’ and ‘MASSI’ are meaningless
words for most consumers and the conceptual dissimilarity based on the fame that
Lionel Messi enjoys among football fans only concerns part of the public, who is
interested in football and sport in general. In the Board’s opinion, there are no
elements in the file suggesting that the mark ‘MESSI’ will be conceptually
associated to the football player by all the relevant consumers. It must be assumed,
therefore, that this conceptual association will not be made, contrary to what the
applicant argues, by the whole of the relevant public. For the public who does not
associate ‘MESSI’ with the football player, the alleged conceptual dissimilarity will
obviously not be perceived.”MESSI v MASSI (Case T-554/14, April 26 2018)
General Court (para 61)
“Dès lors, en l’espèce, il convient de relever que la renommée du nom Messi,
en tant que nom de famille du joueur de football mondialement célèbre et
en tant que personnage public, constitue un fait notoire, c’est-à-dire un fait
qui est susceptible d’être connu par toute personne ou qui peut être connu
par des sources généralement accessibles. Ces sources généralement
accessibles, mentionnées par le requérant dans sa requête devant le
Tribunal, sont des éléments dont la chambre de recours pouvait disposer au
moment où elle a adopté sa décision et dont elle aurait dû tenir compte dans
le cadre de son appréciation de la similitude des signes sur le plan
conceptuel. Du reste, la chambre de recours a elle-même admis la
renommée du requérant, au point 27 de la décision attaquée, même si elle a
estimé à tort que celle-ci était limitée uniquement à la partie du public
pertinent qui s’intéresse au football et au sport en général.”MESSI v MASSI (Case T-554/14, April 26 2018)
Pending at CJEU:
C-449/18 P - EUIPO v Messi CuccittiniMITSUBISHI v DUMA/GSI (Case C-129/17, July 25 2018)
Can you stop debranding?MITSUBISHI v DUMA/GSI (Case C-129/17, July 25 2018)
Questions referred
‘(1) (a) Do Article 5 of Directive 2008/95 and Article 9 of Council Regulation No 207/2009 cover
the right of the trade mark proprietor to oppose the removal, by a third party, without the
consent of the trade mark proprietor, of all signs identical to the trade marks which had been
applied to the goods (debranding), in the case where the goods concerned have never
previously been traded within the EEA, such as goods placed in a customs warehouse, and
where the removal by the third party occurs with a view to importing or placing those goods on
the market within the EEA?
(b) Does it make any difference to the answer to question (a) above whether the
importation of those goods or their placing on the market within the EEA occurs under its
own distinctive sign applied by the third party (rebranding)?
(2) Does it make any difference to the answer to the first question whether the goods thus
imported or placed on the market are, on the basis of their outward appearance or model, still
identified by the relevant average consumer as originating from the trade-mark proprietor?’MITSUBISHI v DUMA/GSI (Case C-129/17, July 25 2018)
AG Opinion CJEU Judgment
“… removal, without the trade mark “… the proprietor of a mark is entitled to
proprietor’s consent, of signs affixed to oppose a third party, without its consent,
goods does not constitute use of a trade removing all the signs identical to that
mark where: mark and affixing other signs on products
placed in the customs warehouse, as in the
– those goods have not previously
main proceedings, with a view to importing
been placed on the market in the EEA
them or trading them in the EEA where
because they are stored in a customs they have never yet been marketed.”
warehouse where they have undergone
alterations to bring them into line with EU
technical standards; and
– the signs were removed with the
aim of importing those goods into the EEA
or placing those goods on the market in the
EEA bearing a (new) trade mark which
differs from the original mark.”MITSUBISHI v DUMA/GSI (Case C-129/17, July 25 2018) Right to control initial marketing: “The removal of signs identical to the mark prevents the goods for which that mark is registered from bearing that mark the first time that they are placed on the market in the EEA and, hence, deprives the proprietor of that trade mark of the benefit of the essential right … to control the initial marketing in the EEA of goods bearing that mark.” Impact on following functions: 1. Origin 2. Investment 3. Advertising
MITSUBISHI v DUMA/GSI (Case C-129/17, July 25 2018)
Koton v Nadal Esteban (Case C-104/18 P)
“What constitutes bad faith and how can it be established?”
EUTM application by Mr Nadal Earlier marks belonging to
Esteban in April 2011 (classes 25, Koton (classes 25 and 35)
35 & 39)Koton v Nadal Esteban (Case C-104/18 P) • Opposition successful in respect of classes 25 and 35 • TM registered in class 39 • Koton files declaration of invalidity citing bad faith • Invalidity declaration rejected by Cancellation Division, Board of Appeal and EU General Court. Grounds include fact that Koton’s rights do not extend to services in class 39
Koton v Nadal Esteban (Case C-104/18 P) General Court judgment (Case T-687/16, November 30 2017): “bad faith, within the meaning of Article 52(1)(b) of Regulation No 207/2009, must be assessed, inter alia, in the light of the likelihood of confusion between a sign used by a third party and the sign for which registration is sought, which presupposes identity or similarity not only between the signs, but also between the goods or services in question … bad faith on the part of the applicant for registration presupposes that a third party is using an identical or similar sign for an identical or similar product or service capable of being confused with the sign for which registration is sought.”
Koton v Nadal Esteban (Case C-104/18 P) AG Kokott’s five arguments against the General Court: 1. Anyone may apply for bad faith invalidation 2. Take into account all relevant factors 3. Case law on abusive conduct provides guidance 4. Overlap with existing registration unnecessary (eg TM squatting) 5. Acquisition of descriptive domain name (Lindt case) Bad faith “constitutes a departure from accepted principles of ethical behaviour or honest commercial and business practices”
Koton v Nadal Esteban (Case C-104/18 P) Finding bad faith: is Mr Nadal Esteban able to allay the doubts whether the application was filed in good faith by explaining his economic logic? • the fact that an applicant knows or must know that others are using an identical or similar sign as a trade mark, albeit for different goods or services, gives rise to doubts whether an application for registration was filed in good faith • If an attempt is knowingly made to apply to register such a sign additionally for goods or services for which others enjoy trade mark protection, those doubts become much more significant • there is no indication of a legitimate interest in accepting the risks of his services being associated with Koton or of Koton being impaired in future activities
Koton v Nadal Esteban (Case C-104/18 P) • Case C-371/18: Sky v Skykick (reference from High Court – CJEU hearing on May 25 2019) ‘Can an EU trade mark or a national trade mark registered in a Member State be declared wholly or partially invalid on the ground that some or all of the terms in the specification of goods and services are lacking in sufficient clarity and precision to enable the competent authorities and third parties to determine on the basis of those terms alone the extent of the protection conferred by the trade mark? If the answer to question (1) is yes, is a term such as 'computer software' too general and covers goods which are too variable to be compatible with the trade mark's function as an indication of origin for that term to be sufficiently clear and precise to enable the competent authorities and third parties to determine on the basis of that term alone the extent of the protection conferred by the trade mark? Can it constitute bad faith simply to apply to register a trade mark without any intention to use it in relation to the specified goods or services? If the answer to question (3) is yes, is it possible to conclude that the applicant made the application partly in good faith and partly in bad faith if and to the extent that the applicant had an intention to use the trade mark in relation to some of the specified goods or services, but no intention to use the trade mark in relation to other specified goods or services? Is section 32(3) of the UK Trade Marks Act 1994 compatible with Parliament and Council Directive 2015/2436/EU and its predecessors?’
curia.europa.eu
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