Three EU court rulings from last week and why they matter
Two EU General Court decisions and one ruling from Austria have provided some welcome guidance for trademark owners, as WIPR reports.
EU General Court: ‘on your bike’
Last week the EU General Court affirmed the European Union Intellectual Property Office’s (EUIPO) decision to uphold a trademark opposition, finding that cars and motorcycles are similar in their uses.
Mark Webster, associate at Maucher Jenkins, said the judgment raises “interesting points regarding the similarity of the goods in question and the level of attention on the part of the relevant public”.
Taiwanese motorbike manufacturer Kwang Yang Motor Company sought to register ‘CK1’ for its motorcycles, prompting a German individual’s opposition. Udo Schmidt owns the stylised mark ‘CK’ for hearses and automobiles and was concerned about the similarity between the marks.
Despite key differences between motorcycles and cars, for example the ability to carry passengers, the court rejected Kwang’s argument that the goods covered by both marks are only “remotely” similar.
In fact the court said that these arguments were “largely irrelevant”, according to Webster, as the primary purpose of motorcycles and cars are the same.
Christian Tenkhoff, senior associate at Taylor Wessing, added that the products are often sold through the same distribution channels so “consumers are likely to expect that such products originate from the same commercial source”.
Tenkhoff explained that “the question is not so much whether the technical aspects or the physical appearance of the goods is similar, but rather (among other things) whether the goods serve a similar purpose”.
Webster added: “In my opinion this creates, at worst, a reasonable degree of similarity between the goods in question.”
Furthermore ‘CK1’ and the earlier registered ‘CK’ were found to be visually and phonetically similar, an impression which was not changed by the addition of the number ‘1’ in the applied-for mark, despite the court’s confirmation that the relevant public in this case have a high level of attention.
The reasoning behind the finding of a high level of attention stemmed from the high value of the goods in question, Webster added, meaning the “public will employ a high degree of care and consideration when purchasing such goods”.
Tenkhoff explained the underlying idea behind the ruling with an analogy: “A consumer who considers buying, say, a diamond will gather more information and look more carefully at the attached brand than a consumer walking down a supermarket in search of chewing gum.”
He said that the judgment, with regards to the finding of a high level of attention and the affirmation of the EUIPO’s decision, is in line with previous judgments.
But ultimately, Webster concluded, the judgment shows that “a high level of attention on the part of the average consumer may still be insufficient to overcome the potential for confusion between the two marks in question”.
Deutsche Post decision: a welcome departure
The EU General Court’s dismissal of Deutsche Post’s trademark appeal has been described as a noteworthy decision.
German delivery service Deutsche Post tried to oppose Belgium-based bPost’s 'Bepost' trademark, based on Deutsche Post’s earlier trademarks.
After the EUIPO dismissed its case, Deutsche Post appealed to the General Court. Once again, this was dismissed and Deutsche Post was ordered to pay costs.
Alexander von Mühlendahl, partner at Munich-based Bardehle Pagenberg, told WIPR that the decision demonstrates the General Court’s practice when it comes to 'weak' trademarks.
He said that if the word 'post' had not been used in common language, then the decision would have been criticised. However, it is widely understood to be a generic word relating to the postal service. “Thus, adding elements to the word 'post' is usually sufficient to differentiate the marks,” he said.
“However, the General Court’s decision is noteworthy because it follows the lead taken a long time ago by the EUIPO that marks consisting of elements which are not themselves registrable or barely inherently distinctive should not prevail over later trademarks on the sole ground that the later trademark contains the same unregistrable or very weak element,” he explained.
“The General Court is by no means consistent in finding less protection for 'weak' trademarks, and thus this new decision is a welcome departure.”
Mühlendahl added that the Court of Justice of the European Union has not endorsed the theory of 'weak' trademarks—and perhaps Deutsche Post will seek review from the court.
The global battle over vodka
A ruling by the Appellate Court of Linz in Austria on vodka trademark rights has highlighted the importance of appointing court experts.
The ruling involves a long-running global dispute between SPI Group and Russian state enterprise FKP Sojuzplodoimport over who owns the Stolichnaya and Moskovskaya vodka trademarks.
SPI Group is the rightful owner of the trademarks—in Austria—said the court.
The decision comes after The Hague Court of Appeal ruled against SPI in the Benelux region and said the Russian state enterprise is the owner of the trademarks in the Netherlands.
Martin Reinisch, partner at Austrian-based law firm Brauneis Klauser Prändl, said it is noteworthy that the Austrian judgment is critical of the Dutch ruling. In the Dutch proceedings, no experts on Russian law were appointed, unlike in the Austrian case.
According to Reinisch, should they have been appointed, they would have “determined that the Russian statute of limitations applied“.
“The Austrian court expressly rejects the Dutch court’s approach that invoking an alleged invalidity of the Russian privatisation, which had been planned and carried out in the early 1990s, would not be subject to any limitation period,” he pointed out.
However, the Dutch approach would “forever hinder the affirmation of a transfer of trademarks”, ignoring the fact that the state enterprise had for so long been considered the owner of the trademark by all parties involved. He said it was only during the 1999/2000 political upheaval in Russia when various efforts to “reintegrate” privatised former state property, such as the vodka trademarks, started to take place.
“The present Austrian Appellate Court judgment confirms that the notable anomaly in the global dispute are the Dutch judgments, the more since the present Austrian ruling has been rendered only shortly after the Dutch judgment of January and has expressly taken this judgment into consideration, but has still clearly rejected the Dutch approach,“ Reinisch concluded.
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