EU court rulings from last week and why they matter

Last week, WIPR reported on several important senior court rulings, including one case involving tobacco company Philip Morris. Below we outline why they are important for lawyers.

Late to the party and still allowed in

Evidence which is produced late should still be considered by the European Union Intellectual Property Office (EUIPO) in certain circumstances, according to the EU General Court.

Philip Morris filed to invalidate a mark owned by Explosal, alleging a resemblance to its own mark that also covered tobacco products.

The application for invalidation was rejected by the Cancellation Division, and Philip Morris complained on appeal of not being given the opportunity to submit evidence of reputation—an allegation that was dismissed by the EUIPO, which described the assumption that such evidence could be submitted and considered late as “naive”.

The EU General Court affirmed that representation claims must be supported by “concrete evidence”, but that the EUIPO made a procedural error in not considering evidence that was later produced. Where such evidence “could have had an effect” on the outcome, possibly rendering it “substantially different”, the EUIPO must examine it.

Chris McLeod, partner at Elkington and Fife, noted that the judgment in this case is “highly critical” of the EUIPO and its failure to meet its “duty of sound administration” in this matter.

He said “it would appear logical that the EUIPO should only consider the merits of an appeal on the basis of the evidence and submissions put forward at first instance”, but this judgment indicates that this is not the case. It appears that the EUIPO has a duty to also consider evidence filed after an appealed first instance decision.

Explosal’s disputed trademark is still at risk of invalidation as the court refused to issue a judgment on the invalidity aspect of the appeal, instead referring the matter back to the EUIPO to consider the probative value of the evidence, McLeod explained.

Fantasy and reality can collide

Silhouettes of a “fantasy animal” jumping and a black panther “tilting” are visually and conceptually similar, according to the EU General Court.

The court upheld sportswear brand Slazenger’s opposition to a trademark application by vehicle provider Arctic Cat last week, affirming the decision by the EUIPO.

Though the animals depicted showed different movement styles, faced opposite directions, and were different creatures, according to Arctic Cat, the court ruled that such minor differences are not details that consumers “notice” or “remember”.

Each mark showed a member of the feline family in profile as black silhouettes, “conveying an impression of movement”, and therefore present a likelihood of confusion to consumers.

Joseph Fesenmair, partner at Bird & Bird, said the decision is in line with the developed concept of the likelihood of confusion.

He identified three key points of note from the decision. First, applicants may not rely on a higher than average level of attention from the relevant public, where the wording of the trademark is wide and generic. He advised that practitioners should “be aware that your client might be better off with a very precise list of goods and services”.

Second, visual similarity will not be precluded where the earlier trademark depicts an animal belonging to the real world and the applied-for mark depicts a fantasy animal, as long as there are visual and conceptual similarities. “Fantasy characters … may resemble living creatures in a way that the lines are blurred.”

Finally, in cases where marks may not be confused conceptually, Fesenmair warned that “the game may change and be judged differently” where graphical representations are visually similar.

Fesenmair added that “keeping the stable clean definitely involves different tasks for trademark lawyers than for zoologists”.

Consistency is key

What do you think when you see the letter ‘i’ being used in connection with goods in the technology sector?

Last week, the EU General Court upheld a refusal to register the mark ‘iGrill’ in relation to a connected cookery product, produced by iDevices. The iGrill product line is made up of mobile-compatible Bluetooth thermometers for use in food.

According to the EU General Court, it is a “well-known fact” that the letter ‘i’ can mean “intelligent” or could refer to ‘information technology’.

“Consequently, it must be held that the goods at issue have the characteristic of making grills intelligent by enabling them to make use of information technology in order to assist their users,” added the court.

Georgina Shaw, senior associate at Burges Salmon, said it isn’t particularly surprising that the General Court upheld the ruling that the mark was descriptive.

“The takeaway point is that the court reiterated that the meaning of the letter ‘i’ when used in marks in connection with goods in the technology sector is likely to be considered to be a descriptive characteristic of those goods,” she explained.

Shaw went on to say that the decision is consistent with the public’s understanding of the use of “i" in relation to a wide range of smart products on the market.

“The decision comes less than a year after the English High Court’s ruling in March 2017 that Apple’s ‘iWatch’ mark was descriptive of computer software,” she concluded.

One you may have missed …

Late last week, WIPR reported that supermarket chain Aldi had been unsuccessful in registering and appealing against an opposition to its ‘Le Coq de France’ trademark.

… And one to look out for

Tomorrow, an advocate general at the Court of Justice of the European Union will hand down his opinion on whether Louboutin should be able to register red soles on high-heeled shoes as an EU trademark.