TRADEMARK DILUTION It is clear that the CJEU had in mind use in
“IN SUCH CASES PROTECTION MAY BE GRANTED EVEN WHEN NO EVIDENCE OF HARM TO THE TRADEMARK OR ITS PROPRIETOR IS PRODUCED.”
relation to similar (competing) goods/services. However, the rationale of dilution by blurring is initially based on use concerning dissimilar goods/services. In this latter case, no concerns about a restriction of competition are raised. Te CJEU confirmed further in a somewhat
contradictory way that “logical deductions” are allowed—not on the basis of “mere suppositions” but on the basis of “an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the circumstances of the case”. Te General Court, to which the case
returned, on February 5, 2015 gave a second ruling. In these proceedings one of the parties attempted to apply the “logical deductions”. Tese were a) the reputation and the highly distinctive character of the earlier mark; and b) the fact that the goods concerned were identical or highly similar, emphasising the fact that the choice of a mark so similar to the earlier highly distinctive trademark in the relevant sector was not founded on any good reason. However,
the General Court rejected this
argument on formal grounds, as no plea of an existence of a possibility of change in the economic behaviour had been put forward in the original proceedings. Te General Court went on to confirm the rejection of the dilution by blurring claim.
and prove that use of a later mark would have an effect on the behaviour of consumers using goods covered by the earlier mark. Te court ruled that
this change can be
established if the owner of the earlier mark has shown that the mark’s ability to identify the goods or services is weakened, as use of the later mark leads to the dispersion of the earlier mark’s identity in the public’s mind. Tis ruling was overturned by the CJEU for not following the guidelines in Intel. Following an appeal in that case, the CJEU
confirmed that it is not sufficient, in order for the consumer’s economic behaviour to be affected, for the consumer to consider the sign with a reputation to be less attractive, prestigious or exclusive as a result of use of the later sign. Here, the consumer’s perception, not behaviour, would have changed. A consumer’s perception and the fact that
it
notices the presence of the later sign is a subjective element, from which change cannot be solely deduced. Te CJEU also stated that: “Accepting
the criterion put forward by the General Court could, in addition, lead to a situation in which economic operators
improperly
appropriate certain signs, which could damage competition.”
www.worldipreview.com
Free-riding As regards free-riding, the CJEU has confirmed that a mere attempt to ride on the coat-tails of a mark with a reputation could be sufficient for a finding of taking unfair advantage of the distinctive character or reputation of the trademark, without any requirement for finding a detriment to the trademark or its proprietor. It follows, therefore, that in such cases protection may be granted even when no evidence of harm to the earlier trademark or its proprietor is produced. Te General Court examined free-riding for the
first time in its second ruling in the Environmental Manufacturing case. Drawing from earlier General Court case law, it affirmed that in certain instances the risk of free-riding may be presumed to be “obvious” and “at first sight”. Such cases are those where the earlier mark has
an exceptionally high reputation or, alternatively, where the earlier trademark has “a longstanding reputation and a very distinctive character”. In all other cases, said the General Court,
invoking the order in Japan Tobacco v OHIM from April 30, 2009, it is necessary to prove that the image or quality characteristics of the earlier mark can be transferred to the goods/ services covered by the later mark.
Marina Perraki is a partner at Tsibanoulis & Partners Law Firm. She has been practising intellectual property law for more than 17 years and has extensive experience in IP and unfair competition law counselling and litigation. She can be contacted at:
m.perraki@
tsibanoulis.gr
An example of how this can be proved is found
in the General Court’s ruling of January 22, 2015 in Kenzo Tsujimoto v OHIM, where evidence was provided to convince the court that the image conveyed by the earlier trademark used for clothes could be transferred to the sector of the later mark, namely the wine sector. Te expansion of traditional (ie, concerning dissimilar goods/services) dilution by blurring to similar goods/services has been welcomed by trademark owners. However it has raised concerns about the CJEU’s balancing of trademark protection and effective EU competition. It has even led the CJEU to set up high evidence thresholds for trademark owners with a reputation. Ultimately it has made the traditional dilution by blurring claims hard to apply.
Practitioners’ concerns Taking unfair advantage and free-riding appear easier. To the extent they may be established in the form of a presumption that brings the burden of proof to the later owner to provide good reasons for the choice of trademark, this is indeed the case. However,
to the extent that the actual
transfer of image and/or good qualities of the earlier trademark to the goods/services of the later mark needs to be proved, this legal basis also becomes also harder to apply. It remains to be seen whether national courts
applying the above case law will in practice strengthen the dilution provisions
of the
EU legislation or restrict the protective legal framework for trademarks with reputation.
World Intellectual Property Review Annual 2015
77
LEBEDEV ROMAN OLEGOVICH /
SHUTTERSTOCK.COM
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