The matter at hand
This matter concerned a joined EU trade mark dispute relating to four sets of opposition proceedings between Tulliallan Burlington Ltd. (‘Tulliallan Burlington’) and Burlington Fashion GmbH (‘Burlington Fashion’).
The dispute between Tulliallan Burlington and Burlington Fashion arose in response to the latter’s application of November 2008 and November 2009 for registration of the word mark ‘BURLINGTON’ and other figurative marks as EU trade marks in classes 3, 14, 18 and 25. Tulliallan Burlington submitted notices of opposition with regard to the goods in classes 3, 14 and 18, based on Tulliallan Burlington UK word mark ‘BURLINGTON’, ‘BURLINGTON ARCADE’ and other UK and EU figurative marks.
The grounds for opposition were based on Articles 8(1)(b), (4) and (5) of the Trade Mark Regulation No 207/2009. Both the EUIPO Fourth Board of Appeal and the General Court rejected the alleged ground of Tulliallan Burlington, whereby the decision of the Opposition Division was annulled.
By its appeals, Tulliallan Burlington asked the Court to set aside the judgments of the General Court, by which the General Court dismissed its actions seeking the annulment of the four decisions of the Fourth Board of Appeal. The grounds of appeal mainly included an infringement of Article 8(1)(b), and (5) Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, related to the opposition based on repute of the earlier mark’s reputation and based on likelihood of confusion.
The judgment of the ECJ
With regard to Article 8(5) of the Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, the ECJ first recalls the settled case law and reiterated that the conditions laid down in that Article are cumulative. In order for the application to be precluded, it would only need to be found that one of the conditions is not satisfied: “(i) there must be a link between the earlies trade marks and the marks applied for; (ii) the earlier trade mark cited in opposition must have a reputation; and (iii) there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark” (paragraph 66).
The ECJ made clear that the General Court has erred in relation to the above part of Article 8(5) Regulation 207/2009. By rejecting the opposition lodged, on the ground that there was no evidence provided to show that there was a reduction in the ‘attractiveness’ of the earlier mark. The use of such “ambiguous references” could not establish that there is no risk of taking unfair advantage of the distinctive character or the repute of the earlier mark (paragraph 81). Moreover, the three types of infringements as referred to in Article 8(5) Regulation 207/2009 do not concern the ‘commercial attractiveness’ of the place designated by an earlier mark (paragraph 84).
As to the third ground of appeal, relating to Article 8(1)(b) of the Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, the ECJ holds that the General Court has erred in law by relying on Praktiker (C-418/02) from which it follows that the similarity between the goods applied for and the retail services covered by the earlier trade mark registration cannot be established in the absence of a specific indication of the goods covered by those services. First, in line with the considerations in the judgment in EUIPO v Cactus (C-501/18 P) the Praktiker judgment does not concern the trade mark registrations that are registered prior to the date of that judgment (paragraph 133). This entails that three earlier UK trade mark of Tulliallan Burlington would not be effected by the requirement that it is necessary for the goods offered for sale to be precisely specified to which services they relate. Second, it cannot be inferred from the judgment in Praktiker “that the ground of opposition may be rejected form the outset, simply by invoking the absence of any precise statement of the goods to which the retail services covered by the earlier trade mark may relate” (paragraph 134).
The ECJ holds that this would prevent the earlier trade mark to oppose against later applications of the same or similar goods and services. As a result, denying the earlier trade mark of having any distinctive character, even though the earlier trade mark has not been declared invalid on the grounds laid down in the Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark. Moreover, by means of a request for proof of genuine use of the earlier mark within the meaning of Article 42(2) Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, it is possible “to determine the precise goods covered by the services for which the earlier trade mark was used and, therefore, pursuant to the last sentence of that paragraph to taken into account, for the purposed of the examination of the opposition, only those goods.” (Paragraph 136).