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Tuesday, 25 September 2007

Protecting family values

Better late than never, says the IPKat as he posts this note on the fortnight-old Community trade mark appellate decision by the European Court of Justice in Case C‑234/06 P, Il Ponte Finanziaria SpA v OHIM, FMG Textiles Srl.

In 1998 Marine Enterprise Projects (now FMG) applied to register as a Community trade mark a figurative sign the main components of which were the depiction of a roll of cloth, unfurling to take on the form of the sail of a small sailing boat, against a thick horizontal line above which the word ‘Bainbridge’ appears in cursive lettering. Registration was sought for goods in Classes 18 (leather, imitation leather, animal skins, hides; trunks, cases etc) and 25 (clothing, footwear, headgear).

Ponte opposed, citing a number of its earlier Italian trade marks and arguing a likelihood of confusion. These were, effectively, the word mark THE BRIDGE and two families of marks, one figurative and one three-dimensional, for similar goods. The OHIM Opposition Division rejected the opposition on the basis that none of Ponte's marks was sufficiently similar to the applied-for mark. The Board of Appeal agreed, ruling that the principle of interdependence between similarity of goods and signs (i.e. the more similar the goods were, the less similar the marks needed to be in order to establish a likelihood of confusion) was irrelevant here since there was not even a minimum degree of similarity between the parties' respective marks.

Ponte appealed to the Court of First Instance, which dismissed the appeal. In the CFI's view

* it was only when the Board of Appeal examined the argument that there was a ‘family of marks’ that it established that only two of those marks had been put to use and could therefore be taken into account in that assessment. The Board had however expressly affirmed that those earlier trade marks were not individually subject to proof of use because the five-year period following their registration, during which use must be proved, had not yet elapsed. It therefore concluded that those six earlier marks had to be taken into consideration for the purpose of assessing the existence of a likelihood of confusion with the trade mark applied for.

* So far as the likelihood of confusion with a 'family' of marks was concerned, the Italian consumer was actually confronted on the market with only two of those earlier marks, with the result that the extended protection claimed by the appellant, connected with the existence of an alleged ‘family of marks’, was not justified in this case.

* The earlier mark THE BRIDGE could only be regarded as being in genuine use if it was objectively present on the market in a manner that was effective, consistent over time and stable in terms of the configuration of the sign. Such genuine use of that trade mark in question had not been proved.

* As to the other earlier trade marks that were not taken into account for the purposes of assessing the likelihood of confusion, the Board of Appeal was entitled to reject what were described as the ‘defensive’ registrations of those marks, since the effective function of the trade mark registration is protect marks that are registered so that they will be used, not so that they will only exist to prevent registration by others.

* Ponte's marks were only remotely similar to FMG's, whether taken individually or en famille.

Ponte then appealed further to the European Court of Justice, which dismissed the appeal on more grounds than this posting indicates. Said the ECJ:

* the CFI's assessment of similarity of the marks was well-based and the ECJ cannot substitute its own assessment of the facts for that of the CFI;

* the CFI was entitled to conclude that the fundamental lack of similarity of the respective marks was not offset, when assessing a likelihood of confusion, by the high degree of similarity of the respective goods;

* " 61. ... a trade mark may be registered only individually and the minimum five-year protection afforded by such registration is conferred on it only as an individual trade mark, even where several trade marks having one or more common and distinctive elements are registered at the same time".
* "64. ... no consumer can be expected, in the absence of use of a sufficient number of trade marks capable of constituting a family or a series, to detect a common element in such a family or series and/or to associate with that family or series another trade mark containing the same common element. Accordingly, in order for there to be a likelihood that the public may be mistaken as to whether the trade mark applied for belongs to a ‘family’ or ‘series’, the earlier trade marks which are part of that ‘family’ or ‘series’ must be present on the market".

The IPKat is sure this analysis must be right. There will surely be cases in which, on the facts, the level of similarity (i) between the different marks within the same family and (ii) between the family marks and the 'gatecrasher' is high enough to get the opposition to the starting line and where (iii) the degree of use of all the family members is strong enough for consumers to draw the wrong conclusion whenever they see an interloper, assuming it to be part of the family too. But this case was never going to be the paradigm. Merpel adds, but look how useful a fatally flawed opposition can be. The opposed application was filed nine years ago yesterday: look how much uncertainty has tainted the brand's future for nearly ten years.

The IPKat's earlier post on the Advocate General's Opinion here

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