Vorsprung durch Technik? Audi scores victory in trade mark appeal before the EU General Court

Alexandros Antoniou, University of Essex School of Law, a.antoniou@essex.ac.uk

On 12 July 2019, the EU General Court (GC) dismissed an appeal (Audimas v EUIPO - Audi (AUDIMAS)) from a Lithuanian sportswear company, whose trade mark was successfully opposed by the German automobile manufacturer Audi.

Background

In October 2014, the applicant, Audimas AB, obtained through the World Intellectual Property Organisation (WIPO) an international registration for the mark displayed below, designating the European Union (EU) as one of the protection territories.

The mark above represents the applicant company’s name in black font, with stylised open and closing brackets right above the word element. Registration was sought for classes 18, 25 and 35 of the Nice Agreement, covering a wide variety of leather goods, clothing, footwear and headgear as well as advertising and business management services. In June 2015, the international registration designating the EU was notified to the EU Intellectual Property Office (EUIPO), pursuant to the provisions of the Council Regulation 207/2009 on the Community Trade Mark (now replaced with Regulation 2017/1001 on the EU Trade Mark).

In August 2015, the German automotive company AUDI AG opposed the mark applied for on the basis of its previously registered EU word mark ‘AUDI’ for goods and services falling in classes 18, 25 and 35 of the Nice Agreement as well as class 12, which covers vehicles and vehicle components. Audi claimed, in particular, infringement of Article 8(1)(b) of the 2009 Regulation, i.e. invalidity based on ‘relative grounds’ which relate to conflicts with earlier trade mark rights that belong to third parties (these provisions are preserved under the new 2017 Regulation). The Opposition Division of the EUIPO upheld the opposition two years later. Audimas appealed the decision in November 2017 but the Office’s Second Board of Appeal rejected the appeal in May 2018 (‘the contested decision’).

Specifically, the Board of Appeal found that the relevant public in this case consisted of ‘professional customers' and 'end consumers', whose level of attention varied from medium to high. In addition, the signs at issue were broadly similar at least to the extent that Audi’s earlier mark was reproduced in full in the dominant element of the applied-for mark. The Board also considered that a Spanish-speaking consumer would break down the mark applied for in two verbal parts, i.e. ‘audi’ and ‘mas’, because the latter element alluded a meaning to them, namely 'more' or ‘plus’. Moreover, the figurative element of the brackets was found to be ‘purely ornamental’ and its combination with the term ‘mas’ meant that the mark in question was at best only weakly distinctive. The Board of Appeal ultimately concluded that there was a likelihood of confusion for the Spanish-speaking part of the relevant public within the meaning of Articles 8(1)(b) of the 2009 and 2017 Regulations.

The legal framework and applicable principles

Under both Regulations 2009 and 2017, an opposition must be based on rights held by the opponent in an earlier trade mark (or other form of trade sign). The grounds on which an opposition can be based are called ‘relative grounds for refusal’, the relevant provisions of which are found in Article 8 the Regulation. By contrast to ‘absolute grounds for refusal’, which are examined ex officio by the EUIPO, relative grounds for refusal are inter partes proceedings based on the likely conflict with earlier rights. This means that the burden falls on the owner of earlier rights who needs to be vigilant in checking the filing of potentially conflicting EUTM applications and oppose the registration of marks when necessary.

More specifically, under Article 8(1)(b):

upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not to be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

Audimas contested the Board of Appeal’s findings in relation to the comparison of the signs and the existence of a likelihood of confusion. According to the established case law of the Court of Justice on the interpretation of Article 8(1)(b), the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings, constitutes a likelihood of confusion (see Canon [1998] EUECJ C-39/97). The likelihood of confusion on the part of the public must be appreciated globally, according to the perception of the marks in the mind of the average consumer of the goods or services concerned. It is also settled case law that the average consumer normally perceives a mark as a whole and does not proceed to examine its various details (see Sabel [1997] EUECJ C-251/95). Consequently, the visual, aural and conceptual similarities of the marks must be assessed with reference to the overall impression created by the marks bearing in mind their distinctive and dominant components. Account must be taken of all factors relevant to the circumstances of the case and, in particular, the similarity between the marks and the goods or services. A lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see Lloyd Schuhfabrik Meyer [1999] EUECJ C-342/97). Where the earlier trade mark has a highly distinctive character, such as Audi’s mark in the present case, either because of its intrinsic qualities or because of the use that has been made of it, the likelihood of confusion is greater.

The level of attention of the relevant public

The GC disagreed with the applicant’s claim that buyers of Audi cars would demonstrate an increased level of attention, which would in turn decrease the likelihood of confusion between the marks at issue. Indeed, the prospect of an expensive purchase, e.g. in the case of luxury products, is a good reason for the average consumer to be more circumspect in relation to the origin and the quality of the articles concerned. A high degree of attention is likely to be displayed during the purchasing process of a specific product which is generally regarded as reflecting its owner’s social status. Nevertheless, both Audi’s earlier mark and Audimas’ applied-for mark extended to clothing and footwear as well. These are mass consumption goods, which are frequently purchased and used by the average consumer who nevertheless still pays a fair degree of attention in choosing them, albeit not above average (see Esprit International v OHMI-Marc O'Polo International [2011] EUECJ T-22/10). Thus, the Board of Appeal was not wrong in assessing the relevant public’s attention in the present case as varying from medium to high.

The goods and services concerned

The goods and services covered by Audimas’ mark were deemed at least in part identical or similar to those covered by Audi’s earlier mark. This conclusion was not disputed by the applicant and was approved by the GC.

The comparison of the signs and the likelihood of confusion

The GC agreed with the Board’s ruling that the dominant element of the applied-for mark was the fanciful term ‘audi’, since the second verbal element of the applied-for mark, i.e. ‘mas’, was already well-known to Spanish speakers and had a lower distinctive character. Moreover, the figurative element of the brackets was not, in the GC’s view, ‘particularly original or elaborate’. As such, it did not add anything ‘striking’ to the overall impression created by it in the perception of the relevant public.

The visual similarity between the marks was reinforced by the fact that both shared the ‘audi’ element which constitutes the earlier mark and is found at the beginning of the applied-for mark. This is consistent with previous case law, according to which the fact that a mark consists exclusively of the earlier mark to which another word is attached is an indication of the similarity between those two marks (see Fon Wireless v EUIPO-Henniger [2016] EUECJ T-777/14). On the phonetic level, the degree of similarity between the marks was found to be essentially ‘greater than average’, notwithstanding the different pronunciation given to the contested mark by the syllable ‘mas’. It is also a settled principle that both verbally and phonetically the average consumer generally pays more attention to the beginning of the mark than its ending, since the first part of a trade mark normally has a greater impact than the final part (see L'Oréal v OHMI-SPA Monopole [2009] EUECJ T-109/07 and Gappol Marzena Porczynska v EUIPO-Gap [2017] EUECJ T-411/15). Finally, the GC noted that the absence of conceptual similarities between the two signs should not deflect attention from their substantial visual and phonetic similarities and concluded that they were ‘broadly similar’.

In the GC’s view, the Board’s conclusion that the Spanish-speaking part of the relevant public would eventually establish a link between the contested mark and Audi could not be called into question. The Board of Appeal had held, and the GC agreed, that it could not be ruled out that the applied-for mark, with its element ‘mas’ attached to the word ‘audi’, could be taken to identify an exclusive series of goods or services of the Audi family of brands. The relevant public could perceive the ‘Audimas’ mark as a ‘particular variant’ of the earlier mark for a specific type of goods with a positive quality. In light of the foregoing, the GC dismissed the applicant’s action.

Commentary

In sum, the GC upheld the original EUIPO decision, ruling that the applied-for mark by Audimas would likely be confused with Audi’s earlier trademark. The upheld contested decision is undoubtedly a victory for Audi, one of the world leaders in the automotive sector. On the other hand, Audimas has become, since its incorporation in 1931, one of the market leaders in the design and manufacture of sports and active lifestyle apparel in the Baltic States. The brand has been cooperating with the Lithuanian National Olympic Committee as an official supplier of sportswear for the Lithuanian Olympic family for more than 15 years. In 2013, Audimas also began sponsorship of the Belarus National Olympic Committee. This is certainly a displeasing for them outcome, which might be appealed to the Court of Justice of the EU.

Despite Audi’s weak connection to the clothing industry, the GC’s ruling can hardly be a surprise. It is grounded in some well-established principles relating to the comparison of signs in trade mark disputes. When assessing their similarity, the marks in question will be considered as a whole. Although it is not possible to isolate and focus exclusively on one component of a complex mark and compare it with another mark, the assessment of similarity may be made solely on the basis of the dominant component of a complex mark where all the remaining components of the mark – like the brackets and the element ‘mas’ in this case – add very little to, or are negligible in, the overall impression produced by it.

In addition, where a complex mark comprises word and figurative elements, the former would in principle be considered more distinctive than the latter, because the average consumer tends to refer to the goods or services in question by quoting the name of the mark in question, rather than by describing its figurative element (see Coca-Cola v OHMI-Mitico [2014] EUECJ T-480/12). The shared ‘audi’ element was incapable in this instance of lending the applied-for mark a distinctive character and accentuated the likelihood of confusion. Also, the presence of a few different syllables is not always enough to exclude the existence of a phonetic similarity between two signs. In the present case, the phonetic difference between the signs at issue, resulting from the addition of a second syllable ‘mas’ in the applied-for mark, was not sufficient to overcome and preclude the phonetic similarity between ‘Audi’ and ‘Audimas’ taken as a whole.

These opposition proceedings also confirm that, if a likelihood of confusion between two conflicting rights relating to the EU is established in a specific linguistic area, this is enough for the registration of the later mark to be refused. When an opposition is filed pursuant to Article 8(1)(b) and a likelihood of confusion can indeed be found on a substantial part of the public, the reasoning of the decision typically concentrates on that part of the public that is most prone to confusion, making the examination of the perception of the marks in several languages redundant. In addition, where the relevant public consists of both professional and general consumers, the finding of a likelihood of confusion in relation to just one part of the public is enough to uphold an opposition.

Finally, the outcome serves as a useful reminder of the need to conduct comprehensive trademark searches prior to filing a trade mark application, which needs to be carefully tailored to in order to maximise the chances of a successful registration. Opposition hearings can be very costly to defend. If unsuccessful, an applicant will have to pay not only their legal costs but some of the costs of the other party too – and will still not be able to achieve registration of their mark.

The reform of the General Court: unleashing the forces of change

Daniel Sarmiento, Professor of EU Law at the University Complutense de Madrid*

The reform of the General Court (doubling to two judges per Member State in three stages by 2019, with the parallel abolition of the seven-judge Civil Service Tribunal) is a reality now. The Council and the European Parliament have green-lighted a reform (taking effect from Christmas Day) that is destined to become a landmark in the history of the EU’s judiciary. For good or for worse, the new General Court, the product of a constitutional reform under the cover of a reform of the Court’s Statute, is here to stay. (For the background to the change, see comments by Steve Peers here).

There are many critics of the reform, including some Member States. The supporters seemed to be for a time a silent minority, but they have successfully convinced the sceptics and the European Parliament finally gave way to the many objections being brought by MEPs, academics and even some members of the General Court. (For criticism of the change, see Laurent Pech and Alberto Alemanno here and here; on the difficult negotiations, see Steve Peers here). As for me, I raised some objections as to the principles underlying this reform. In a previous post I argued that a transformation of the EU’s judiciary like the one we are about to see required a Treaty reform. However, my objection was (and is) not based on the legality of the reform, but on the means and procedures used, which, I believe, do not reflect the importance of the measures being taken.

But the reform is now part of our lives and we should start learning how to cope with it, as lawyers, as academics, as judges or as civil servants. The Court of Justice of the European Union will undergo a momentous change, so the quicker we get used to it, the better.

The change will start, of course, at the General Court itself. Fifty-six judges are a lot of people, and they will certainly not be your average Joe. Fifty-six highly competent lawyers, chosen through a very complex and demanding procedure, both political and technical, from which not everybody comes alive or in one piece. Fifty-six judges with their armies of référendaires, outnumbering by far the référendaires of the Court of Justice, thus becoming the most numerous professional community (together with jurist-linguists) inside the Institution. And despite the huge overall number, it is possible that the power, presence and authority of each individual judge will diminish. In a 56-judge jurisdiction, individual voice is a rarity. Authority and power will depend on the ability of each judge to act efficiently, not necessarily on their intellectual prestige. In very big houses, housekeepers, not charming armchair thinkers, reign supreme.

Specialised chambers at the General Court will become a reality, too. There are already plans to have a chamber for staff-cases, but soon it will be inevitable for specialised trademark chambers to appear too. The haunting myth of a specialised competition chamber will probably be postponed, but if staff and trademark specialised chambers become a success, then the door will be open for further experiments. IP lawyers will be happy to hear this, but only if the appointment process works correctly. If judges end up taking turns in order to have a say at both the “fun” chambers and the “boring” chambers, rotations will be lethal for coherence and expertise. If référendaires end up attached to specialised chambers (and not to judges) in order to ensure a certain stability in the case law, judges might end up questioning who is running the place. But if specialised chambers are not an option, who will trust a jurisdiction with, say, fifteen three-judge chambers, to ensure the coherence of the law?

A 56-judge General Court might finally push the Court into giving away its jurisdiction in preliminary references procedures in some specific areas, as provided by Article 256.3 TFEU (the new rules require a report on this issue in two years’ time). It could make sense to have a specialised Community trademark chamber also hearing references of interpretation concerning Directive 2008/95, on the approximation of laws of the Member States relating to trade marks. And why not VAT references? The Court of Justice is still bombarded with VAT references from national courts that can perfectly be handled by the General Court. The review procedure would not be dead after all, and it could be revived in order to guarantee a certain degree of supervision over the General Court’s preliminary rulings. The inertia and dynamics of an enlarged General Court might be too powerful to stop, and we could soon find ourselves with specialised chambers at the General Court hearing preliminary references. I have no objection to that, but we should be aware of the forces that are being awakened by the current reform.

On a different note, the new General Court will have (or it certainly should have) the tools and staff to rule swiftly on a very high number of cases every year. This means that the appeals on points of law will skyrocket in the years to come. The Court of Justice has taken measures to face this challenge, and in the recent years there is a clear tendency to make good use of Article 181 of the Rules of Procedure. This provision allows the Court of Justice to strike out an appeal by way of a reasoned order if it is manifestly inadmissible or unfounded. I have a feeling that this procedure will become the standard practice when the Court of Justice handles appeals against decisions of the General court, and its use will probably develop into a sophisticated type of discretionary remedy. The Court of Justice will not be able to process the amount of appeals being brought by unhappy parties against decisions of the General Court, and therefore its practice will become more and more principled-oriented. Appeals will not become a remedy for parties, but a sort of individually-brought review procedure with the purpose of guaranteeing the unity and coherence of EU Law. In an overburdened appellate court, appeals will not be a remedy to ensure the effective legal protection of individual litigants. Once again, I have no objection to this model (in fact, it exists in many Member States), but we should all be aware of its impact. Decisions of the General Court will need to be carefully made, because the parties will hardly have another shot before the Court of Justice.

This brings me to another related point: the need of external control of EU courts. If direct actions end up being dealt in a single-instance jurisdiction, with appeals left only for principled cases carefully chosen by the Court of Justice, it will be essential for the EU to accede to the European Convention of Human Rights. Private parties will not tolerate a judicial system in which crucial decisions for their lives, welfare or property, are solved by a sole jurisdiction against whom there is only a discretionary appeal. Strasbourg scrutiny will become crucial if the EU wants to prove that its judiciary is, as it self-proclaims itself, “a complete system of legal remedies and procedures”. However, the resistance of the Court of Justice to accept the conditions of accession to the ECHR will not help when, in the near future, its appeals become more and more principled, and the judgments of the General Court more and more crucial for litigants. In an ironic twist of fate, the reform of the General Court which was pushed so hard by the former President of the Court, Vassilios Skouris, might end up becoming the Union’s fast-speed train towards accession to the ECHR, which Skouris was so concerned about.

Lastly, this reform will also force a revision of the Court of Justice of the European Union as an Institution. So far, it has been clear that the Institution and its President were one thing, and the Court of Justice, the General Court, the Civil Service Court and their respective Presidents quite a different one. The tensions between the Court of Justice and the General Court during the negotiations of the last reform have brought to the day of light the need to clear up who is in charge. A 56-judge General Court will be a very powerful player if it ever decides to act in unison. The President of the Institution, not of the Court of Justice, could have a tough time trying to find its own voice in such a crowded house. His colleagues at the Court of Justice are the ones who have elected him (and to whom he is accountable every three years), but he is the President of an Institution that also represents the 56 judges at the General Court. I can imagine the current President, a natural consensus-builder, managing successfully to represent both jurisdictions before other Institutions. However, future Presidents might not have the same abilities as the current one. If institutional malaise is to be avoided in future years, serious consideration should be given to the Court’s role as an Institution.

The reform of the General Court is the first step in the transformation of the EU’s judiciary. It will unleash the forces of change, whether we like it or not. But if those forces are wisely managed, it could be the Institution’s chance to become the judicial hegemon that many wish the Court to become. Wisdom and care, in very high doses, will be needed more than ever in the years to come.

*This post previously appeared on the Despite our Differences blog

Barnard & Peers: chapter 10

Photo credit: G. Fessy, CJEU

Has UKIP lost all sense of humour? Another parody tale…

By Sabine Jacques

PhD student focussing on the parody exception 

at the School of Law, University of Nottingham (UK)

 

Introduction

Last September 2014, a Twitter account called ‘UKIP Trumpton’ was established by Mike Dicks, stating that ‘After the recent defection of the Mayor of Trumpton and Mr Troop the town clerk this is the new home of UKIP tweets from Trumptonshire’ and used as logo of its own the official logo of UKIP (a right wing political party). This weekend, the creator of the account shared on his Facebook profile that the aim was to ‘gently take the mickey out of UKIP - It struck me that most ukip supporters or 'Kippers' were reminising about a Britain of their youth that was more like the classic kids show Trumpton than the reality I remembered so I chose to start Trumpton UKIP and pretend the Mayor and Mr Troop had defected to the people’s army’. After learning the existence of this account, UKIP MEP David Coburn announced the account as ‘fake’ and asked his 9000 followers to report/block the parody account. The creator of the account recently reported that the Mr Coburn threatened him to take legal action for the use of the party’s trade mark. Against this backdrop, this post presents an overview of the legality of the parody under copyright and trade mark laws (but not libel law), as well as Twitter’s policy on parodies.It’s relevant also by analogy to other parodies of UKIP, or other political parties besides.

Should UKIP Trumpton account be maintained?

1)    Is the parody exception applicable to the use made by Mr Dicks?

With the recent introduction of the fair dealing exception for the purpose of parody under copyright law and its recent interpretation by the Court of Justice of the European Union (discussed here and here), this case could be the first interpreting the UK provision. UKIP could argue that the logo is copyright protected as artistic work under section 4(1)(a) CDPA and that by reproducing this logo, Mr Dicks infringed the exclusive right of reproduction of UKIP. UK law would apply, and the UK courts would have jurisdiction, in accordance with the EU’s Rome II and Brussels Regulations.

If infringement is found, Mr Dicks could argue the application of the parody exception. To do so, he needs to prove that the use was for the purpose of parody and that the use was fair.

Regarding the purpose, the Court of Justice of the European Union established that the use needs to constitute the expression of a humour and the absence of confusion between the use and the original. In this particular case, the humoristic character derives from the association made between the political party’s possible view on the ideal Britain and a children’s television series called ‘Trumpton’ whereby apart from the ice cream vendor, there were no immigrants featuring. Despite the lack of guidance from the Court on how the humour element should be appreciated, it is argued that courts must interpret this requirement broadly as to include spoofs and other form of parodies. It is also argued that this requirement must be appreciated based on the parodist’s intent. In this case it appears that that Mr Dicks aimed ‘to gently take the mickey out of UKIP’. Hence, this requirement should be easily fulfilled. Moving on to the absence of confusion, this requirement might be more difficult to reach. While most of the viewers will not be confused as to the parody character of the account, the study of the fairness factors should help determining whether the use is allowed or not.

As mentioned, there is no decision interpreting the UK provision to this day. The reasoning will be inherently purely speculative. It is established that fairness is a question of degree, a matter of impression. Hence, the factors generally include the amount taken, the use made (commercial motives), consequences of the dealing (competition with the original?), whether the work is published, the motives of the dealing (such as dishonesty) and the availability of other means. As not all these factors would be relevant for parody uses, it seems that the most problematic is the amount reproduced. This factor requires the courts to consider the number of extracts and their extent. As in this case Mr Dicks’ account reproduces the entire logo with the addition of Trumpton, this could lead to the conclusion that the use is infringing. Yet it seems that UK case law does not rule out the possibility to copy the entire original work as long as the nature and purpose of the use fit the goal of the exception. This should create some margin for courts to acknowledge the parody use of Mr Dicks. By relying on the overall appearance of the alleged infringing Twitter account, the use should be found covered by the exception.

2)    Could Mr Coburn be successful in his action under trade mark law?

Unlike under copyright law, there is currently no specific parody exception under the Trade Mark Act 1994 creating a defence for parody use. Essentially, trademarks differ from copyright insofar as the primary function of trade mark law is the identification of goods and services in the market place. Other functions are also recognised depicting mostly added value of the trade mark such as communicator or social functions. Following the harmonisation of trade mark laws by the Trade mark Directive, the Trade Mark Act broadened the scope of infringement to encompass similar and dissimilar goods or services (article 5.2 of the Directive and section 10 of the Trade Mark Act). Against this backdrop, it appears that Mr Coburn has a strong position to argue for the infringement of the graphic and verbal trade marks of UKIP and consequently, the ban of the Twitter account.

Yet, section 10 of the Trade Mark Act requires the use to take place ‘in the course of trade’ and ‘in relation to goods or services’. In a nutshell, the reasoning is twofold: (a) we need a use in the course of trade; (b) there needs to be a use as a trade mark. Despite the broad interpretation of ‘in the course of trade’, it is hardly arguable that Mr Dicks’ use fulfils this requirement. Due to this requirement, most parodies would fall outside the scope of the Trade Mark Act. Additionally, as the parody use made by Mr Dicks is constitutes a vehicle for non-commercial expression for the primary purpose of political comment, it could be argued that the use of UKIP’s trade mark is not in relation to goods and services.

If the use were to be found as ‘in the course of trade’ and ‘as a trade mark’ then there needs to be likelihood of confusion or association.

Under the Trade Mark Act, likelihood of confusion requires 3 elements: (a) a distinctive trade mark, (b) the similarity between the goods and services, (c) the similarity between the sign used and the protected mark. This is different from the confusion requirement under copyright as the latter mainly refers to the similarities between the altered work and the protected work to assess whether the public is likely to believe that the parody originates from the original author or was supported by the author. Although the existence of these differences, it is argued that most parodies should be found lawful under trade mark law as the very nature of parody requires the absence of confusion between the use and the original.

As the likelihood of confusion is rare, what remains is the likelihood of association with the original. This occurs when consumers are in a position to make a mental connection between the parody and the registered mark. Despite Laddie J.’s statement in the well-known Wagamama case rejecting its application in UK Trade mark law (retaining as the only possibility the likelihood of confusion as to the origin), the Court of Justice of the European Union held that the likelihood of confusion includes the likelihood of association (Lloyd Schuhfabrik Meyer & Co. GmbH v. Klijsen Handel BV, at 17; SABEL v. Puma at 18-19). Yet if section 10(2) of the Trade Mark Act includes all associations which recalling UKIP, parodies will inherently infringe based on their very nature unless it can be shown that the use is outside the course of trade.

If there is no confusion, could there be dilution of UKIP’s trade mark? To be successful under section 10(3) of the Trade Mark Act, UKIP will have to show that the registered mark has a reputation in the UK and that Mr Dicks' use of an identical or similar sign, without due cause and in the course of trade, takes unfair advantage of, or is detrimental to the distinctive character or the repute of UKIP's mark. Therefore, confusion is no longer a requirement under this provision. UKIP’s reputation will probably be easy to prove in front of the court. Hence, Mr Dicks will have to attempt to argue due cause. Currently, there this concept of due cause leave extensive room for judicial interpretation and could enable courts to build the bridge with the fair dealing defence under copyright or refer to the freedom of expression. Nevertheless given the commercial context of the Act, the courts could restrict due cause to commercial necessity.

This being said, in case of unfair advantage (in such way that the use of the trade mark aims to gain an advantage) where no harm is proven to UKIP, the freedom of expression argument should prevail over the enforcement of the trade mark rights of the UKIP. The difficulty lies in the fact that the interpretation of this provision fails to distinguish between taking unfair advantage of the distinctive character and taking unfair advantage of the reputation of a trade mark. As trade mark law does not distinguish between uses of marks for the purpose of market communication and uses in other domains such as parody, it’s not clear explains how right holders are in a position to bar parody uses.

3)    How does Twitter manage parody accounts?

Under its rules and policies, Twitter provides guidelines  as to manage parody accounts. Following these, several requirements have to be met: (a) ‘The avatar should not be the exact trademark or logo of the account subject’; (b) ‘The name should not be the exact name of the account subject without some other distinguishing word, such as "not," "fake," or "fan."’; and (c) ‘The bio should include a statement to distinguish it from the account subject, such as "This is a parody," "This is a fan page," "Parody Account," "Fan Account," "Role-playing Account," or "This is not affiliated with…"’. Therefore, users are enable to create parody accounts as long as they meet the requirements set here above.

By shutting down accounts which do not meet these requirements, Twitter decides to resolve internally a possible infringement leading to a possible curtailment of freedom of expression. While the authorisation process is more transparent than it used to be, it might still stifle the freedom of information and ideas.

Conclusion

As this blog post shows, the regime of parodies is not a peaceful journey and uncertainties remain. While copyright infringement appears hard to argue, UKIP is in a stronger position regarding the infringement of their trade marks due to the current trajectory of trade mark protection. Also, UKIP could file a complaint directly to Twitter as the alleged infringing account fails to expressly mention its parody nature in the bio.

Should consumers be expected to know foreign languages? The CJEU ruling in the Golden Balls case

 

Anna Dannreuther, Trainee, Research Department of the CJEU (All views author’s own)

In its judgment of 20 November in the case of Intra-Presse SAS v OHIM (the 'Golden Balls' case), the CJEU notably did not end the 7 year trade mark battle between the UK family-run company Golden Balls Ltd. and Intra-Presse, the French organisers of FIFA’s Ballon d’Or or European Footballer of the Year Award. In a dispute concerning the registration of the word mark ‘Golden Balls’, the eighth chamber of the CJEU sent the case back to the Office for Harmonization in the Internal Market (“OHIM”) to be decided on one of the grounds of appeal at issue in the case, and has given firm instructions on the assessment to be pursued.

Background

In 2007, Gus and Inez Bodurs of Golden Balls Ltd., sought registration of the word mark ‘Golden Balls’ as a Community Trade Mark. In 2008, Intra-Presse filed opposition proceedings against the registration in respect of their earlier registered Community Trade Mark ‘Ballon d’Or’. They did so on the grounds of Article 8(1)(b) and 8(5) of the Community Trade Mark Regulation No 40/94, now found in Regulation 207/2009.  

Under Article 8(1)(b),  the ‘confusion ground’, registration may be refused if there exists a likelihood of confusion on the part of the relevant public because of the similarity between the two trade marks and  the similarity of the goods and services covered by them.  Under Article 8(5), the ‘reputation ground’, if the later mark is similar to the earlier mark and the earlier mark has a reputation in the Community and the Member State concerned, registration can be refused even for goods and services not covered by the earlier trade mark, where such registration would take unfair advantage of, or be detrimental to the repute of the earlier trade mark.

The First Board of Appeal of the OHIM held that the two word marks were ‘extremely similar’ [para 15]. On that basis they upheld Intra-Presse’s opposition under Article 8(1)(b), and only registered Golden Balls’ mark for goods not covered by the mark ‘Ballon d’Or’, thereby dismissing Intra-Presse’s  opposition under Article 8(5).

On appeal, the General Court of the European Union found that the signs ‘Ballon d’Or’ and ‘Golden Balls’ only had a weak degree of conceptual similarity, which was not enough to offset their visual and phonetic dissimilarities [para 28] to create confusion. It also found that the signs lacked the requisite similarity for the purposes of applying Article 8(5). It thus rejected Intra-Presse’s opposition in entirety.

Intra-Presse appealed this judgment on three grounds; (i) distortion of the facts in the assessment of the abilities of the relevant public; (ii) infringement in Article 8(1)(b) of Regulation No 40/94; and (iii) infringement of Article 8(5) of Regulation No 40/94.

Judgment

As regards the first two grounds, the Court held that it had no jurisdiction to rule on appraisals of fact, as appeals to the CJEU are limited to points of law under Article 256(1) TFEU and Article 58 of the Statute of the Court of Justice of the European Union [paras 38 and 63]. It accordingly found Intra-Presse’s pleas manifestly unfounded and manifestly inadmissible respectively.

Regarding the third ground of appeal, the Court reiterated its case law, notably Ferrero v OHMI, and stated that the degree of similarity required under Article 8(1)(b) and under Article 8(5) of the Regulation is different. For the former there must be such a degree of similarity as to lead to a likelihood of confusion on the part of the relevant public. For the latter, any degree of similarity triggers an overall assessment of the possibility whether registration of the later trade mark might be detrimental to the reputation of the former. Included in this assessment is whether the former trade mark has a reputation in the Community and Member State concerned. Accordingly, the Court sent the case back to the OHIM to adjudicate afresh on these matters, taking into account the guidance given in the judgment.

Comment

Not quite the judgment that any party wanted, the case nevertheless serves as a useful reminder that the degree of similarity needed in order to establish injury under both Article 8(1)(b) and Article 8(5) is different. Notably, under Article 8(5) any degree of similarity triggers an overall assessment of whether registration of the later mark would be injurious to the earlier mark. Integral to this assessment is the earlier mark’s reputation.

Of greater interest is the parties’ argumentation concerning the linguistic capabilities of the relevant public in relation to conceptual similarity. As the Court dismissed these grounds as appraisals of fact, OHIM’s findings in this respect may be interesting. Intra-Presse argued that the General Court had erred in law by stating that prior translation of the word marks was needed before it could be recognised by the relevant public as conceptually similar.  It added that when word marks are composed of basic words in various languages understood by the public, then there is no ‘intellectual process of translation’, nor does the consumer engage in ‘prior translation’ or ‘begin by translating’ [para 57]. It asserted that the meaning of those words would be immediately understood by the relevant public, whatever its mother tongue.

This case thus raises important linguistic issues. Given the multilingual nature of citizens of the European Union, to what extent do differences in the language of the word marks affect the likelihood of confusion of the relevant public? To what extent does this take into account cultural differences, such as U.K citizens’ lesser ability to speak languages, as compared to, say, Luxembourgish citizens? Specifically, what is the degree of linguistic knowledge of the average French or British consumer? We have seen cases where conceptual similarity is established when the languages of opposing word marks are both official languages of the territory of the relevant consumer (Organismos Kypriakis Galaktokomikis Viomichanias v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), Garmo AG, Case T-534/10, 13 June 2012[2012] E.T.M.R. 55) and where German, Finnish, Dutch, Danish and Swedish consumers are able to understand the English word ‘shark’ with prior translation (Osotspa Co. Ltd, established in Bangkok (Thailand) v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), Case T-33/03, 9 March 2005 E.C.R. 2005 page II-00763). However, we have not seen a case where the notion of ‘prior translation’ is discussed in detail, or a case assessing the language capabilities of the francophone and anglophone public. Here’s hoping that the case rises through the ranks and we see a CJEU ruling on this imminently.
 

 

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