Trade marks: dilution and retail service registrations

Background

Article 8 of the EU Trade Marks Regulation (207/2009/EU) (Article 8) set out the following relative grounds on which a trade mark registration may be refused:

• The sign being applied for is identical to an earlier trade mark registered for identical goods or services.
  
  
• The sign is similar to an earlier trade mark registered for identical or similar goods or services and there is a likelihood of confusion with the earlier mark.
  
  
• The sign is identical with an earlier trade mark registered for similar goods or services and there is a likelihood of confusion with the earlier mark.
  
  
• The sign is identical with or similar to an earlier trade mark and the earlier mark has a reputation in the EU and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

In Praktiker Bau-und Heimwerkermärkte, the ECJ held that services provided in connection with retail trade of goods could be registered, for example, services providing an assortment of goods offered for sale, and services aimed at inducing consumers to buy from the trader instead of a competitor (www.practicallaw.com/1-201-0681).

Class 35 of the International (Nice) Classification of Goods and Services for the purposes of the Registration of Marks (Nice Classification) (class 35) covers retail services.

Facts

B applied to register the word mark BURLINGTON and three figurative marks as EU trade marks (EUTMs) for goods in classes 3, 14, 18 and 25.

T filed oppositions based on its own earlier UK, and one EU, word and figurative marks relating to BURLINGTON and BURLINGTON ARCADE registered for services in classes 35, 36 and 41.

The European Intellectual Property Office (EUIPO) upheld the opposition for goods in classes 3, 14 and 18. B appealed.

The EUIPO Appeal Board allowed the appeal. It found that the earlier marks' reputation under Article 8(5) had not been proven in the UK for retail services in class 35. T appealed.

The EU General Court dismissed the appeal. T appealed.

Decision

The ECJ allowed the appeal.

The objective of retail trade is the sale of goods to consumers. This activity consists of selecting an assortment of goods offered for sale and offering a variety of services aimed at inducing the consumer to conclude the transaction. Retail services in class 35, within the meaning of the Nice Agreement includes the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and buy those goods. These services may be provided by retail stores, wholesale outlets, vending machines, mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes. The concept of retail services therefore covers services which are aimed at the consumer and which consist, on behalf of the businesses occupying a shopping arcade's stores, in bringing together a variety of goods in a range of stores enabling the consumer to conveniently view and buy those goods and in offering a variety of services separate from the act of sale, which seek to ensure that that consumer buys the goods sold in those stores. As correctly found by the General Court, the services provided by shopping arcades or shopping centres are, by definition, not excluded from the scope of the concept of retail services defined in class 35.

The General Court also correctly found that shopping arcade services are not limited to rental and real estate management services. The concept of a variety of services necessarily includes the services organised by a shopping arcade in order to retain all the attractiveness and practical advantages of such a place of commerce, the aim being to enable the customers interested by the various goods to conveniently view and buy them in a range of stores.

The General Court had incorrectly based its assessment on a possible reduction of the attractiveness of the earlier marks. However, this did not mean that the court had correctly assessed whether there was a risk of detriment to the distinctive character or reputation of the earlier marks. In any event, the finding that there was no risk of reduction in attractiveness could not prove there was no risk of unfair advantage being taken of the distinctive character or reputation of the earlier marks. Also, the General Court's finding that use of the mark applied for goods similar to those on sale in T's London arcade would not affect the commercial attractiveness of the place designated by the earlier trade mark, did not relate directly to any of the three types of detriment prohibited by Article 8(5).

The General Court had also wrongly found that the absence in the specifications of the earlier marks of any precise statement of the goods that might be sold in the various shops comprising a shopping arcade, such as the arcade referred to by T's earlier marks, precluded any association between those shops and the goods of the mark applied for. The absence of association would mean that no similarity or complementarity could be established between the services covered by the earlier trade marks and the goods covered by the marks which had been applied for.

As the earlier UK marks relied on in the opposition were registered before Praktiker, they were not in any event affected by it. Also, it could not be inferred from Praktiker that, when a trade mark covering retail services registered after Praktiker was relied on in an opposition in relation to likelihood of confusion, that ground of opposition might be rejected from the outset simply because of the absence of any precise statement of the goods to which the retail services covered by the earlier trade mark might relate.

Comment

The ECJ has provided useful guidance as to the correct approach to the assessment of dilution, including unfair advantage or detriment to an earlier mark's distinctive character or reputation, in the context of oppositions where the earlier marks relied on relate to retail services.

Case: Tulliallan Burlington Ltd v EUIPO (C 155/18 P to C 158/18 P).