Carbon's Intellectual Property Litigation expert Jess Owen takes a look at the EU General Court’s recent decision in the case ACTC GmbH v EUIPO T-94/17.
HIPSTER OR COMMANDO?
“Taiga” and “Tigha” are very dissimilar clothing brands. Taiga is a Swedish brand, specialising in climate-protection clothing for extreme industries like the military. Tigha, based in Germany, designs fashionable street wear.
The potential for customer confusion is minimal. The German hipster and the Swedish commando are unlikely to shop at the same mall.
But the General Court has ruled that the Nice Classification system for trademark (TM) registration isn’t expansive enough to incorporate both brands.
Nice Classification, which has been adopted by the EU and approximately 150 other TM offices worldwide, consists of 34 different classes of goods and 11 classes of services.
When registering a TM, applicants must identify each class in which they seek protection.
Some of the classes are defined quite specifically. Class 34, for example, is for “tobacco, smokers’ articles and matches.” Other classes are enormously broad. Class 9 includes medical and research apparatus, computer software, fire extinguishers, DVDs and many other seemingly unconnected products.
THE TIGHA FIGHT.
In this recent General Court case, a German clothing company applied to register the mark “Tigha” within Class 25 (clothing, footwear, headgear). The Swedish owner of “Taiga” opposed the application based on “likelihood of confusion” grounds (Article 8(1)(b) of Regulation 2017/1001).
The German company argued that the two clothing brands offered distinct products and Class 25 was broad enough to accept the registration of both marks. “Taiga” had only ever been used in relation to niche, weather-protective clothing and it was pleaded that this shouldn’t entitle it to oppose other, dissimilar ranges of clothing.
If a TM has been held for more than five years, the owner must put it to use to continue benefiting from TM protection (Article 18). Additionally, Article 47(2) has been interpreted to mean that if an earlier EU TM has been used in relation to only part of its registered class, it shall, for the purposes of an opposition, be deemed to be registered in respect of that part only.
The General Court acknowledged that some classes are so broad that it’s possible to break the class into subgroups and narrow protection. However, other categories are “defined so precisely and narrowly that it's not possible to make any significant subdivisions”.
According to the General Court, the determining factor is whether the class includes goods or services with ‘independent purposes or intended uses’.
It will be possible to register multiple TMs within the same class if they each relate to goods, which serve independent purposes. It’s likely, for example, that a fire extinguisher mark would be permitted to coexist in Class 9 with an alike computer software mark.
But mere differences in the nature of the goods or their characteristics are insufficient to create a distinction.
In this case, the General Court held that the clothing sold by Taiga and Tigha had the same fundamental purpose: “they are intended to cover the human body, to conceal, adorn and protect it against the elements”.
After determining that Taiga should be afforded the protection of the whole of Class 25, the Court had no difficulty finding a “likelihood of confusion”. Tigha’s registration in Class 25 was refused.
1. First Class
When registering a TM, it's crucial to carefully select all appropriate classes for registration.
In this case, the court confirmed that multiple TM registrations may be permitted within the same class, if they relate to goods or services with independent purposes. Applicants should keep this in mind when registering their TMs.
Frequently a business’s plans will span several different classes. Failing to register a TM as widely as possible may limit the scope of protection.
2. Use it or lose it
If a TM has been held for more than five years, it's vulnerable to revocation based on non-use.
As this case shows, if a registered class is capable of being divided into smaller subclasses, after five years, protection may be limited to that subclass only.
If your TM is more than five years old, and your business still has plans to expand into new areas, you might consider what steps can be taken to begin using the TM in all areas where protection is sought.
3. Look before you leap
The Tigha brand has acquired significant goodwill over the past decade. As a result of this decision, the mark is now unprotected in the EU. The German company is also vulnerable to an infringement claim, unless it appeals the decision, changes its brand name or reaches an agreement with the Swedish company. All of which are likely to be costly.
If Tigha could return to 2009, when the fashion brand was first launched, no doubt it would reconsider its name.
When choosing a brand name, you should conduct as wide a search as possible for existing registrations and marks. Carry out general online searches as well as searches of TM registers. Search for variations of spelling, names with phonetic similarity and conceptually similar marks.
4. Register early
One of the best methods of determining whether a proposed brand name infringes an existing TM, is to apply for registration and see if anyone opposes it. The costs of an application are modest compared to those of changing a brand name years later.
5. Stay vigilant
When an application is first published, there is a non-extendable three-month window to file an opposition. EUIPO or UKIPO may advise “potentially relevant” TM holders when similar TM applications are made (if TM holders are registered for those services). But this notification cannot be relied on to capture all potentially relevant applications. There are also other more comprehensive monitoring services available.