The worldwide known agent James Bond, or 007, has been involved recently in an opposition procedure against a European Union Trade Mark application.
The owner of the EUTM “007” (word mark), filed an opposition before the EUIPO, to prevent the registration of the figurative trade mark with word elements “ROOM007 PREMIUM CO.”, in class 43 (Restaurant, hotel, bar and cafeteria services).
The opposition was based on the above-mentioned earlier trade mark (007), pursuant to the grounds for refusal of article 8.5 of the European Union Trade Mark Regulation (EUTMR) – i.e., trade mark with reputation - against the EUTM application and against all the services designated.
The Opposition Division of the EUIPO stated that for article 8.5 EUTMR to apply, the following requirements must be fulfilled:
- The signs must be identical or similar.
- The EUTM on which the opposition is based must have reputation.
- The trade mark sought can take unfair advantage or be detrimental to the earlier trade mark.
In the first place, as regards the reputation of the earlier trade mark, the opponent was able to prove the reputation of the EUTM “007”, based on the evidences provided, and particularly for entertainment services.
As regards the similarity of the signs, the Opposition Division reminded that “the global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks”. In this case, outcome of the comparison was at follows:
- Visually: the signs coincided in the number “007”. Even if the contested sign had more figurative and verbal elements in it (ROOM “007” PREMIUM CO.), the earlier EUTM was conformed in its entirely only by the element “007”.
- Aurally: both signs were considered to be aurally similar to an average/ above average degree, as the initial element of the contested sign (ROOM007) included the distinctive “007”, while the other word elements were not distinctive enough.
- Conceptually: as both signs coincided in the number “007”, the opposition division considered that the signs were conceptually similar to an average degree.
With regard to the comparison of the services at stake, even if they were not identical, as the earlier trade mark “007” was registered for entertainment services and the contested EUTM designated hotel/bar/restaurant/cafeteria services, the Opposition Division considered that they were aimed to the general public. Therefore, due to the reputation of the sign “007”, there was a risk that the relevant public could link the element “007” of the contested sign to the earlier one.
As a consequence, the Opposition Division considered that it was likely that the trade mark sought could take unfair advantage of the reputation of the earlier trade mark.
The opposition was upheld on the basis of article 8.5 EUTMR, thus rejecting the contested EUTM application “ROOM 007 PREMIUM CO.”.
THE UFFIZI GALLERIES SUE JEAN PAUL GAULTIER
The world-famous Uffizi Galleries in Florence have taken legal actions against the French fashion brand Jean Paul Gaultier, for using the masterpiece the Birth of Venus. The Birth of Venus was painted by Sandro Botticelli more than 500 years ago, and it is held at the Uffizi Galleries.
Last April, Jean Paul Gaultier launched a capsule collection called “Le Musée”, which was advertised in their social medias and in their website. Their garments, like t-shirts, trousers and scarves, reproduced the image of the Italian artist masterpiece.
However, the Uffizi's claim is not based on copyright law (as the protection granted to authors of art works lasts for 70 years after the death of the author), rather on the Italian Cultural Heritage Code, that controls the reproductions of the Italian cultural heritage. The Italian Cultural Heritage Code establishes that the use of artistic works owned by public institutions, is subject to the corresponding authorisation and the payment of royalties.
Nevertheless, the French fashion brand did not seek for the compulsory authorisation to use the image on their clothing products, nor paid the corresponding royalties to the Florence museum.
The Uffizi filed the lawsuit after requesting to no avail the retirement of the infringing products and requiring the French brand to sign the commercial agreement for using the image. For this reason, the gallery is now asking for €100.000 compensation.
- Publication date
- 14 October 2022
- European Innovation Council and SMEs Executive Agency