Hijos de Moisés Rodríguez González (the appellant), was a company based in the Canary Islands. The Spanish company had a commercial agreement with the company Ornua Cooperative Ltd and Ireland, by which the appellant would commercialise butter from the Irish company in the Canary Islands, under the mark “La Irlandesa”. In 2011, the companies ended their commercial relation, but the appellant kept selling the butter under that sign.
In 2014, Hijos de Moisés Rodríguez González registered the figurative mark with word elements “La Irlandesa 1943”, as a European Union Trade Mark (EUTM) for goods in Class 29 of the Nice Agreement (‘Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats).
In 2015, Ornua Cooperative Ltd and Ireland filed an application for a declaration of invalidity of the EUTM before the Cancellation Division of the EUIPO, alleging deceptive character and bad faith (according to article 59.1.a) and Article 7.1.g) of Regulation 2017/1001). The Cancellation Division rejected the invalidity request on the basis that the defendant did not prove that the contested trade mark was deceptive when it was filed, thus article 7.1.g) was not applicable in this case. From its side, the Boards of Appeal (BoA) annulled the decision of the Cancellation Division, stating that the contested mark was used in a deceptive manner and there was bad faith at the time of the registration, as the EUTM could be misleading for the public as regards the geographical origin of the goods.
Hijos de Moisés Rodríguez González lodged an appeal against this decision before the General Court (GC).
The GC held that the assessment should be done taking into consideration the elements at the time of filing the EUTM application and not afterwards, as the invalidity makes the trade mark invalid with retroactive effects.
In this case, regarding the deceptive character of the EUTM, the Court found that the relevant public would perceive the contested mark as indicating that the goods covered by that mark were of Irish origin. However, at the time of the EUTM filing, there was no inconsistency, as the goods covered by the contested mark did not contain any indication of their geographical origin and that it could therefore cover goods originating from Ireland. Therefore, the Court held the mark could not be considered as deceptive on that date.
As regards the bad faith, the GC considered that as earlier EUTM applications containing similar denominations were rejected by the EUIPO, the contested EUTM can be perceived by the Spanish-speaking public as an indicator of the Irish geographical origin of the products. Moreover, the Spanish company affixed the trade mark to products other than butter, in order to create an association with Ireland, a practice that was contrary to honest commercial and business practices and that could be misleading for consumers.
The GC dismissed the appeal, thus confirming the EUTM invalidity decision issued by the BoAs. Taking into account the previous considerations, the Court considered that at the time of the registration of the EUTM, the applicant acted in bad faith. Nevertheless, the EUTM could not be considered as deceptive.
PUMA vs PLUMAflex by Roal
The applicant Jose Alfonso Arpón S.L., sought to register as a EUTM the figurative mark with word elements “PLUMAflex by Roal”, for goods designated in class 25 (Footwear, except orthopaedic footwear).
The company PUMA SE, the owner of the EUTM “PUMA” (figurative mark with word elements), filed an opposition based on the earlier EUTM before the EUIPO, to prevent the registration of the contested sign “PLUMAflex by Roal”.
The grounds on which the opposition was based were the likelihood of confusion and trade mark with reputation, pursuant to article 8.1.b) of the European Union Trade Mark Regulation (EUTMR) and article 8.5 EUTMR, respectively.
The Opposition Division of the EUIPO upheld the opposition based on article 8.5 EUTMR, a decision which was confirmed at a later stage by the Boards of Appeal of the EUIPO (BoA).
The applicant lodged an appeal before the General Court (GC).
From its side, the GC reminded that when alleging infringement of article 8.5 EUTMR, the following requirements need to be present:
- The marks at stake are identical or similar
- The earlier trade mark on which the opposition is based has reputation
- There is a risk that the requested EUTM takes unfair advantage or can be considered as detrimental to the distinctive character of the earlier trade mark.
As regards the similarity of the signs, the GC reminded that “the comparison of the signs must be based upon the overall impression produced by the signs, bearing in mind, in particular, their distinctive and dominant elements”. In this case, outcome of the comparison was at follows:
- Visual: the Court held the signs were visually similar to a low degree, due to the different stylisation and the presence of a figurative element in the contested mark.
- Phonetical: both signs coincided in the sequence of letters “P””U””M””A”. This means that the earlier mark was contained in its entirely in the contested sign, differing only in the letter “L”. In addition to this, the court stated that it was unlikely that the relevant public would pronounce the word elements ‘flex’ and ‘by roal’ in the mark applied for, as they were placed at the end of the mark. Consequently, the signs were phonetically similar to an average degree.
- Conceptual: the Court considered that for the Spanish-speaking public, the term “pluma” had a meaning (“feather”), whereas for the non-Spanish-speaking public it was meaningless. Thus, the Court concluded that from a conceptual level the signs were different.
As a result, both signs were found similar at a visual and phonetical level.
Consequently, there were enough factors for the Court to consider that this similarity was sufficient for the consumers to establish an association or a link between the mark sought and the earlier EUTM “PUMA”. Hence, the Court dismissed the appeal and confirmed the BoA’s decision.
- Publication date
- 6 July 2022
- European Innovation Council and SMEs Executive Agency