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18 October 2018Trademarks

EU court backs earlier rulings in ‘Viper’ battle

The EU General Court today dismissed an appeal against two decisions that had partially invalidated a trademark for the word ‘Viper’.

The decision vindicates rulings by the European Union Intellectual Property Office (EUIPO) but marks defeat for a US company called FCA, which had applied for the mark in 2004.

FCA’s EU trademark (EUTM), registered in 2005, cited class 12 (motor vehicles and parts thereof); class 28 (toy motor vehicles and motor vehicles model kits); and class 37 (construction, repair and maintenance of motor vehicles and parts thereof).

Nine years later, in February 2014, an individual named Robert Dennis Busbridge sought to have the ‘Viper’ EUTM invalidated.

First, he relied on a UK mark for the same name, registered in 2004 (one year before FCA’s EUTM) and covering “sports cars; all included in class 12”.

He also relied on the mark ‘Viper’, directed to “sports cars, motor vehicles”, which was “allegedly well known in all the EU member states”, according to today’s decision.

The invalidity application was directed to FCA’s goods and services in classes 12, 28 and 37.

In January 2016, the EUIPO’s Cancellation Division invalidated FCA’s EUTM for “motor vehicles and parts thereof” in class 12. That decision came after FCA had asked Busbridge to supply evidence of genuine use of his mark.

On appeal from FCA, the EUIPO’s First Board of Appeal dismissed the appeal in December 2016. It found that Busbridge had proven genuine use surrounding “sports cars in kit form”, which was regarded as a sub-category of “sports cars” covered by that mark, the court explained.

The board also found that the goods covered by this sub-category were identical or similar to those in class 12 covered by FCA’s mark.

FCA then appealed to the General Court, asking it to annul the contested decision. The company argued that the EUIPO had erred in finding genuine use in relation to “sports cars”.

In its decision today, the General Court noted that Busbridge had provided “voluminous” evidence of use before the Cancellation Division and further evidence before the Board of Appeal, including invoices and certificates.

In the first aspect of the ruling, the court said that the EUIPO board had not erred in its findings on “sports cars in kit form”.

It went on to assess the extent to which Busbridge had used the earlier mark.

Based on the initial evidence and, in particular, from articles published in specialist kit car magazines, the court found that Busbridge had offered and sold kits for building Viper cars to car enthusiasts during the relevant period of use (February 2009 to 2014).

In addition, said the court, Busbridge regularly promoted the Viper sports car in a specialist magazine during that time.

“The initial evidence also provided sufficient evidence to show that the Viper sports car and, therefore, the earlier mark, were present at several kit car showrooms during the relevant period,” it added.

The court therefore dismissed FCA’s complaint entirely and ordered the company to pay costs.

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