EU General Court rules in favour of Philip Morris on evidence claims
The EU General Court has today annulled a decision of the European Union Intellectual Property Office (EUIPO) for failing to take reputational evidence into account in a trademark invalidation claim.
The Third Chamber delivered judgment in favour of Philip Morris Brands Sàrl’s appeal against the EUIPO.
In July 2011, Explosal, a Cypriot manufacturer of cigarettes, filed to register a figurative mark with the EUIPO in class 34 for tobacco and related products. It was registered in May 2013 featuring the word ‘Raquel’ on a two-tone polygon (five-sided shape) design.
Philip Morris, a Swiss-based multinational tobacco company, filed to invalidate the mark in January 2014, based on similarity to its Marlboro design that it claimed would cause confusion. The application for invalidation was rejected by the Cancellation Division, which found a low similarity between the marks.
The Swiss company appealed against the decision and in January 2016 the First Board of Appeal dismissed the matter.
It found that the dominant elements at issue were the words ‘Raquel’ and ‘Marlboro’, but the dark geometric shape referred to by Philip Morris as the ‘roof top’ was decorative rather than distinctive.
Philip Morris had also complained of not being given the opportunity to submit evidence of reputation in the first instance, an allegation which was dismissed by the board. The EUIPO contended that Philip Morris “naïvely” presumed it could file evidence late, which was not a legitimate reason for doing so.
It alleged that the company did not reply to the division in the time period set and, even if evidence of reputation had been proven, the low degree of similarity between the marks was not sufficient to constitute confusion.
On appeal Philip Morris asked the General Court to consider the likelihood of confusion and the distinctive character of the earlier mark and find that the board erred in failing to consider submitted evidence.
The “roof top graphic element” of Marlboro has a “substantial reputation throughout Europe”, it alleged. Philip Morris claimed the board erred in finding that the “dark coloured geometric shape would be perceived as a mere decoration which customers would not remember”.
In response the EUIPO claimed that the shape of cigarette packets determined the positioning of three of the five sides of the shape in the design.
The court held that the initial reputational claims made by Philip Morris were “a mere assumption unsupported by concrete evidence”, rather than a reference to a “well-known fact”, as claimed. The party seeking to rely on the reputation of an earlier mark must establish that the mark acquired such a reputation.
However, the court found that the board made a procedural error in not considering the evidence that was later produced, the examination of which “could have had an effect” on the outcome.
The evidence in question “may be such as to modify the substance of the contested decision”, possibly rendering it “substantively different” but for the procedural irregularity.
Philip Morris’ appeal was upheld and the court ordered the EUIPO to rule again on the value of the additional evidence, as it is “not for the court to rule on the invalidity of the contested mark”.
The EUIPO and Explosal were ordered to pay costs.
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