The power of reputation: EUIPO confirms stronger protection for renowned trade marks

The applicant appealed the decision to the BoA.

BoA decision

The BoA first clarified that, for the purposes of procedural economy, it would assess whether Article 8(5) EUTMR could apply, and would consider Article 8(1)(b) only if necessary. Accordingly, the BoA evaluated each criterion of Article 8(5) in turn.

Proof of use

Pursuant to Article 47(2) EUTMR, the opponent may be required to prove that it put its mark to genuine use in the EU for five years preceding the date of application for registration of the sign it contests. Although the Cancelation Division held that the earlier trade mark had been put to genuine use for the entire category of “alcoholic beverages (except beers)” in Class 33, the applicant strongly disagreed with this finding as it believed that the so-called genuine use was merely for vodka, which could not reasonably constitute genuine use for the broader category of “alcoholic beverages (except beers)”.

Identity or similarity between signs

The BoA readily held that both the earlier mark and the contested sign consist of the same word, “CHOPIN”, and are therefore identical.

Reputation of the earlier mark

According to case law, a trade mark enjoys reputation when a significant portion of the relevant public, in a substantial part of the relevant territory recognises it in connection with the goods and services it covers. This reputation cannot be presumed but must be sufficiently established by the proprietor of the relevant mark.

The survey evidence submitted by the opponent demonstrated a “considerable level of awareness and familiarity” in Poland (i.e., 80% of the regular vodka consumers were aware of CHOPIN vodkas), while the investments made in advertisements and social media accounts demonstrated an active policy on the promotion of the mark. Additionally, a Polish court’s decision, which was delivered around 1.5 years prior to the date of application of the contested sign, confirmed the trade mark’s reputation, at least in Poland. All these allowed the BoA to conclude that the mark “CHOPIN” has been used consistently and very frequently, in relation to vodka, since the early 1990s, and has therefore gained reputation.

Existence of a link between the signs

For Article 8(5) to apply, the average consumer, when encountering the contested sign on the relevant products, should associate those products with the earlier trade mark. Here, the BoA warned that merely a “proximity” between the goods is sufficient to establish that link, as opposed to the “similarity” assessment under Article 8(1)(b).

As demonstrated by case law, “proximity” does not require the relevant goods to be identical or similar; even different products may have a certain proximity between them (para 104). Thus, the BoA stated that the “existence of a mere link” between the relevant goods would be sufficient for Article 8(5). Accordingly, it found that the relevant public would establish a link between the contested sign and the earlier renowned trade mark because (i) the relevant public likely has an average level of attention to vodka and the goods in Classes 29, 30, and 32 for which the applicant seeks registration, (ii) the earlier trade mark has an average degree of distinctiveness for vodka, which is elevated by its continuous and intensive use on the Polish market, and (iii) the earlier mark enjoys at least an average degree of reputation.

Risk of harm

Article 8(5) provides a special protection to trade marks with a reputation against free-riding, dilution, and tarnishment. The Board highlighted the investments the proprietor of the earlier mark made in advertisements, its efforts in making its vodka maintain “excellent quality” and “an exceptional taste”, and its success in being ranked among “the best vodkas in the world”. In light of this, it concluded that there was a significant risk the contested sign would parasitically exploit the opponent’s efforts and therefore free-ride on the opponent’s trade mark, without making similar investments.

Due cause

Finally, since the applicant provided no justification for the use of the identical sign, the BoA concluded that there was no due cause to exempt the contested sign from the scope of Article 8(5).

Consequently, the BoA dismissed the appeal and upheld the Opposition Division’s decision.

Comment

The EU trade mark system provides stronger protection for trade marks with a reputation by not requiring similarity between their goods and services and those of a contested sign. Although it may seem unfair to establish a link between vodka and croissants (one of the goods in Class 30, for which the applicant sought registration) and conclude that the contested sign cannot be used for croissants, it is important to note that Article 8(5) is subject to additional requirements, as outlined above, which are not always easy to meet. In addition to offering stronger protection to renowned marks, it introduces significant limits and potential defences that applicants of contested signs can benefit from. Thus, it is apparent that Article 8(5) will only apply in specific cases.

In this Kat’s view, the mechanism provided by Article 8(5) is both significant and necessary, ensuring that the continuous efforts and investments made by the proprietors of renowned trade marks to maintain their brand image are not unfairly exploited, diluted, or tarnished. Registering the applicant’s contested sign “CHOPIN” would have allowed the applicant to free-ride on the opponent’s more than three decades of dedicated hard work and achievements. Ultimately, Article 8(5) benefits not only the proprietor of the earlier mark, but also consumers, ensuring they can continue to trust that when they purchase a product bearing the “CHOPIN” mark, they will enjoy the same, high-quality experience they always have.