With judgment n.208/2013 dated 1 February 2013, the Tribunal of the Entrepreneurs of Venice has analytically examined and applied the principles set out in the European Court of Justice case of Intel Corporation Inc. v CPM United Kingdom Limited to resolve the Italian case Valigeria Roncato SpA v Roncato Srl.
Central to both cases was the application and interpretation of Article 4.4(a) of the first Directive 21 December 1988 89/104/CEE (“the Trademark Directive”) which provides:
“Any member state may furthermore provide that a trademark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that:
a) the trademark is identical with, or similar to, an earlier national trademark within the meaning of paragraph 2 and is to be, or has been, registered for goods or services which are not similar to those for which the earlier trademark is registered, where the earlier trademark has a reputation in the Member State concerned and where the use of the later trademark without due course would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark”..
In the cases Adidas-Salomon and Adidas Benelux, the Court of Justice had clarified the concept of “link” between the earlier well known trademark and the later trademark stating that “the existence of a link must be assessed globally, taking in to account all the factors relevant to the case at issue”.
In particular, the factors to be taken into account are:
- The degree of similarity between the trademarks.
- The nature of the products or services for which the trademarks have been respectively registered, including the degree of proximity or dissimilarity between these products or services, as well as of the relevant public.
- The level of notoriety of the earlier trademark.
- The distinctive character of the earlier trademark, whether it is inherent or acquired due to use.
- The existence of a risk of confusion in the mind of the public.
In the case Intel Corporation Inc. v CPM United Kingdom Limited, on 27 November 2008, the Court of Justice interpreted and widened the concept of “link”.
In the Intel case, Intel Corporation Inc., owner of the trademark “Intel” registered for computers and computer related products, had sought the revocation of the trademark “Intelmark”, used by CPM United Kingdom Limited for marketing services. The English Court of Appeal had referred the case to the Court of Justice in order to clarify the concepts contained in Article 4.4(a) of the Trademark Directive.
The Court of Justice considered that the following factors are not sufficient to prove that there is (1) a “link” as established in the Adidas-Salomon AG case and/or (2) unfair advantage and/or detriment within the meaning of Article 4.4(a):
- The reputation of the earlier mark for products or services which are dissimilar to the goods or services for which the later mark has been registered;
- The earlier mark is unique in respect of any goods or services;
- The earlier mark would be brought to mind by the average consumer when he or she encounters the later mark used for the services of the later mark.
The other factors which should be taken into account, in accordance with the Court of Justice are:
- Whether, having regard to the nature of the goods or services for which the later mark is used, the average consumer would consider that there is an economic connection between the owners of the two marks;
- Whether the distinctive character or repute of the earlier mark for the goods or services for which it is registered is really likely to be affected if the later mark is used for the specific goods or services covered by its registration.
In this respect, the Court of Justice has held that in order to determine whether there is an effective detriment to the distinctive character of the trademark, a global assessment of the position should be carried out, bearing in the mind the following factors:
- The fact that there is a real risk that the use of the later mark for its specific goods or services would affect the “pulling power” of the earlier mark for its specific goods or services;
- The fact that there is a real risk that the owner of the later mark is likely to obtain a real commercial advantage from its use by reason of the repute of the earlier mark;
- If the earlier mark is unique, that it is used for goods or services different from those the later trademark is registered for;
- Where a later mark is not the same as the earlier mark, whether there are changes in the behaviour of the average consumer and in particular, whether the earlier mark is merely evoked in the mind of the average consumer (in this respect, Intel should have shown that, due to the use of the mark Intelmark, its consumers would have purchased a lower number of products bearing the mark Intel);
- Whether the economic behaviour of the average consumer in relation to the earlier mark when used for its goods or services is likely to be affected;
- How inherently distinctive the earlier mark is; and
- How strong the reputation of the earlier mark for its good or services is.
Furthermore, the Court has considered that the detriment or risk of the same must be tangible and real.
In the more recent cases, Handicare Holding BV v Apple Corps Limited and Nasdaq Stock Market Inc v Antarctica srl, the European Courts have interpreted Article 8(5) of Regulation 40/94/EC, which mirrors the contents of the Article 4.4 of the Trademark Directive.
In the Handicare Holding BV v Apple Corps Limited case, the General Court has held that the trademarks “the Beatles” had such a strong reputation that the later trademark “Beatle” although used for different goods and services, would have gained unfair advantage from such a reputation. The Court has further interpreted the definition of unfair advantage, holding that it would not be necessary to show real and actual harm to the earlier mark, being sufficient a serious risk of potential harm. The Court decided that, although there was not necessarily a risk of confusion between trademarks in the relevant public, the public could be induced to transfer the value of the earlier mark to the later mark, without incurring any great risk and costs – in particular, advertising costs, of launching a new mark.
In the case Nasdaq Stock Market Inc v Antarctica srl, the Court of Justice embraced the concepts already expressed in the Intel case, holding that there should be a link in the mind of consumers to prove the unfair advantage and/or detriment to the earlier marks. In this case, the Court considered that the existence of detriment to the earlier mark was supported by the inherent distinctiveness of the Nasdaq trademark and the fact that such a trademark, although registered for financial products, had a reputation that extended further than merely professional circles of the financial sphere.
On the basis of this line of interpretation, the Tribunal of the Enterprises in Venice in the above mentioned judgment number 208/13 filed on 1 February 2013 in the case of Valigeria Roncato SpA v Roncato srl held:
In order to establish a “link” between trademarks, it is necessary to take in to account the nature of the products or services for which these trademarks have been respectively registered. In this specific case, taken for granted the similarities between the trademarks at issue, there are no grounds to sustain that there is a relevant link between them, on the basis that the relevant public is different…
A further concept taken into consideration by the Court of Justice in the Intel case was the issue of “proof” that the owner of the earlier trademark had to provide in order to show there was a link between the trademarks.
According to the Tribunal of the Enterprises in Venice, the owner of the earlier trademark has not been able to provide proof of serious actual infringement of its trademark, or of a serious risk that such infringement would take place in the future.
The lack of the “link” as defined above and “proof” as defined by the Court of Justice have therefore led the Tribunal of the Enterprises to reject the application filed by Valigeria Roncato SpA.
Venice – London, 10 April 2013
Avv. Lucia Loprieno
Barbara Rizzi (Solicitor) www.clydeco.com
© IP Venice Intellectual Property