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 ý þ similarity
MESSI 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 Cuccittini
MITSUBISHI 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
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