Amp it up?
Adding elements can actually lessen impact, warns Emma Reeve. T-184/16, Pempe v EUIPO and Marshall Amplification plc (THOMAS MARSHALL GARMENTS OF LEGENDS), General Court, 8th November 2017.
T-184/16, Pempe v EUIPO and Marshall Amplification plc (THOMAS MARSHALL GARMENTS OF LEGENDS), General Court, 8th November 2017
Key points
- The five-year proof-of-use period following registration must expire before publication of the applicant’s mark
- Promotional and hyperbolic elements of a trade mark will be dismissed in the assessment of similarity of a trade mark
On 13th February 2013, Yusuf Pempe (the Applicant) applied to register a trade mark (the Applicant’s Mark) in classes 9, 16, 18 and 25.
On 29th July 2013, Marshall Amplification plc (the Opponent) filed a notice of opposition to registration in classes 9, 16, 18 and 25. The opposition was based on, inter alia, the earlier EU trade marks (EUTMs) shown on this page, as well as EUTM No 10357201 for MARSHALL, registered on 10th April 2012 in classes 9 and 11 (together, the Earlier Marks).
The Opposition Division upheld the opposition in respect of some of the goods in classes 9, 16, 18 and 25. Yet it rejected the opposition in so far as it was based upon Article 8(4) and (5) of Council Regulation (EC) No 207/2009 (EUTMR), on the basis that no proof had been supplied in support of those grounds.
The Applicant claimed that the Court should: (i) annul the contested decision; (ii) reject the opposition in part; and (iii) order EUIPO to pay the costs. The Applicant submitted that the Opposition Division and the Board of Appeal (BoA) misinterpreted Articles 15(1), 42(2) and 42(3) EUTMR in finding that his request for proof of genuine use in respect of the Opponent’s marks was inadmissible. The five-year period at issue expired after the publication date of the Application, and was therefore irrelevant. The Opponent did not need to furnish proof of its trade marks.
Criticism
Further submissions by the Applicant included a criticism of the BoA’s findings in relation to the similarity of the signs, the similarity of the goods and the distinctive character of the Earlier Marks. A conclusion was drawn that, when a mark consists exclusively of an earlier mark, to which another word element has been added, it is an indication that the two trade marks are similar. The Court concluded that the expression “garments of legends” and the seal in the Applicant’s Mark would be perceived by the relevant public as the usual promotional fluff and hyperbole, and that the consumer would place only limited reliance on them.
The Court rejected the complaint alleging the lack of similarity of some of the goods concerned. It accepted the decision of the BoA that there was no likelihood of confusion.
Right result
The case was interesting, as elements of the mark in the Application were dismissed on the basis that they would be perceived as merely promotional messaging. The implication is that, when brand owners apply to register trade marks and attempt to differentiate themselves from earlier right holders by using additional elements, these elements may, on the whole, be dismissed entirely. This, in my opinion, is right; these elements should not be registrable as, when used in a combination trade mark, the result will be a mark that is difficult to enforce.
Emma Reeve is a Chartered Trade Mark Attorney at Stobbs IP