Burlington Arcade dispute should return to General Court: AG
An advocate general (AG) has advised the Court of Justice of the European Union that the EU General Court erred in requiring the owners of London’s Burlington Arcade to specify the goods and services covered by three UK marks registered prior to the date of the relevant case law.
The opinion, which was issued yesterday, June 26, came as the AG weighed in on a trademark dispute between Tulliallan Burlington, which owns the London arcade, and German fashion company Burlington.
The German company applied to register four trademarks at the European Union Intellectual Property Office (EUIPO), including a word mark for the company name and three logos, between November 2008 and November 2009.
Tulliallan Burlington, which owns the London arcade, filed notices of opposition against the fashion company’s marks, citing its own ‘Burlington’ and ‘Burlington Arcade’ UK word marks, which cover classes 35, 36 and 41, as well as a UK figurative trademark and an EU figurative mark.
The London arcade rents space to a number of luxury jewellery and cosmetics brands.
Although the German company’s marks were covered goods including soaps, leather bags, and jewellery in classes 3, 14, 18 and 25, and Tulliallan’s trademarks were not registered for these classes, the General Court decided that Tulliallan could rely on its registration in class 35 for retail services to oppose Burlington’s marks.
However, the General Court ultimately upheld the decision of the EUIPO’s Fifth Board of Appeal, which had dismissed Tulliallan’s opposition.
AG Gerard Hogan has now recommended that the case be returned to the General Court, after finding that the court had partially erred in its application of EU case law.
According to the AG, the General Court erred in holding that Tulliallan was “required to specify the goods or types of goods to which retail services in class 35 relate” for each trademark.
The General Court had cited a 2005 case, Praktiker Bau- und Heimwerkermärkte (C‑418/02), which held that trademark registrations must specify precisely the goods and services for which they are registered.
As Tulliallan had failed to specify the exact goods and services covered by “shopping arcade services” in class 35, the court said it could not establish any level of similarity between the goods and services covered by the applied-for marks and the Tulliallan’s marks.
The AG noted, however, that three of Tulliallan’s UK marks were registered before the date of the Praktiker Bau- und Heimwerkermärkte decision. In light of this, the General Court was incorrect to find that similarity between the services covered by Tulliallan’s marks and Burlington’s applications couldn’t be established, the AG said.
In Hogan’s opinion, this reasoning did not apply to the court’s ruling on Tulliallan’s EU figurative mark, which was registered in 2006 (after the relevant case was decided upon).
The AG also rejected Tulliallan’s other argument that the General Court erred by not making a finding on whether the relevant public would draw a link between the opposing marks.
Hogan agreed with the court’s finding that Tulliallan had failed to establish the risk of injury to its marks as a result of the German company’s trademark registration.
According to the AG, there was “little reason” to assume that an informed London customer would be deterred from visiting the Burlington Arcade simply because they encountered other goods bearing the name ‘Burlington’ in different outlets.
Hogan recommended that the case be referred back to the General Court, with costs reserved.
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