In El Corte Inglés SA v EU Intellectual Property Office (EUIPO) (T-515/12, October 27 2016), the EU General Court confirmed again the EUIPO First Board of Appeal's decision to grant the registration of the word mark THE ENGLISH CUT.
On February 9 2010 Spanish company The English Cut, SL filed an application for the registration of the EU word mark THE ENGLISH CUT for clothing, footwear and headgear in Class 25 (excluding suits, trousers and jackets). Spanish company El Corte Inglés, SA – which runs the well-known El Corte Inglés chain of department stores – filed an opposition. El Corte Inglés invoked infringement of Articles 8(1)(b) and 8(5) of the EU Trademark Regulation (207/2009), based on:
- Spanish word mark 166450 – EL CORTE INGLÉS – which covers footwear in Class 25; and
- EU figurative marks 5428255 (Figure 1) and 5428339 (Figure 2), both of which cover, among other things, clothing, footwear and headgear in Class 25 and services relating to advertising, business management, business administration and office functions in Class 35.
The EUIPO Opposition Division dismissed the writ of opposition and El Corte Inglés filed a writ of appeal before the EUIPO, invoking infringement of Articles 8(1)(b) and 8(5) of the EU Trademark Regulation.
The EUIPO First Board of Appeal dismissed the appeal for the following reasons:
- As regards Article 8(1)(b) of the EU Trademark Regulation, there was no likelihood of confusion between the applied-for mark and the invoked prior marks as, overall, they were different.
- As regards Article 8(5) of the regulation, despite the fact that the invoked prior marks were well known in the department store sector, El Corte Inglés did not file enough evidence to support the existence of real or potential damage to its reputation or unfair advantage.
El Corte Inglés brought an action before the EU General Court, in which it again claimed infringement of Articles 8(1)(b) and 8(5) of the EU Trademark Regulation.
On October 15 2014 the court dismissed the action, rejecting all of the arguments that El Corte Inglés raised, and confirmed the EUIPO First Board of Appeal decision. In particular, the EUIPO First Board of Appeal dismissed the claim of infringement of Article 8(5), arguing that, as the marks were neither identical nor similar, there was no need to analyse whether the applied-for mark had damaged the well-known character of the prior marks.
El Corte Inglés filed a writ of cassation before the EU Court of Justice, requesting that this decision be nullified.
On December 10 2015 the European Court of Justice (ECJ) held that the EU General Court's decision was partially invalid. The ECJ:
- considered that the decision was the result of a judicial error regarding the refusal of the application of Article 8(5); and
- requested a revision by the EU General Court, particularly with regards to whether the level of similarity between the conflicting marks was enough to establish a link considering the well-known character of the prior marks.
On October 27 2016 the EU General Court rendered its judgment on the subject, confirming once again EUIPO's decision. The court held that the extended protection for the earlier mark from Article 8(5) of EU Trademark Regulation must comply with the following cumulative requirements:
- the identity or similarity between the marks in conflict;
- existence of repute of the earlier mark; and
- the existence of use without due cause of the mark applied for that may imply taking unfair advantage of, or being detrimental to, the distinctive character or the repute of the earlier mark covering:
- the dilution of a mark through the dispersion of its identity and influence in the public, when the earlier mark is not already triggering the immediate association with the products it is registered for;
- when the products or services identified the later mark applied for, cause such an impression that the power of attraction of an earlier mark is reduced; and
- when the commercialisation of the goods or services identified with the later mark applied for could be aided by the association of the repute of the earlier mark.
Having declared the above, the EU General Court amended its approach, stating that none of the above scenarios require the existence of likelihood of confusion. Indeed, the relevant public must only establish a link between conflicting marks (and do not have to confuse them).
In its decision, the EU General Court acknowledged that the EL CORTE INGLÉS marks were well known in the department store sector. Further, the court even held that the marks were similar conceptually; however, this similarity was deemed to be weak and, therefore, would not immediately lead consumers to establish a link between the marks. Rather, the EU General Court considered that the establishment of a link may occur only when the average Spanish consumer makes an intellectual attempt to translate the common element of the marks from English to Spanish and vice versa.
As such, the court concluded that, as the degree of conceptual similarity between the marks was low, the likelihood of the relevant public establishing a link was weak. Further, the court stated that although the earlier marks were well known in the department store sector in Spain, they were not "exceptionally" well known. Thus, the claimant should have proved real or potential damage to its reputation or the distinctive character of the prior marks.
In conclusion, the EU General Court dismissed only the plea confirming that the applied-for mark THE ENGLISH CUT did not damage the well-known character of the prior EL CORTE INGLÉS marks. As such, the court held that the marks can co-exist in the Spanish and EU markets.
This resolution is worthwhile, as few EU General Court decisions consider in detail Article 8(5) of the EU Trademark Regulation. Further, the court established an interesting conceptual difference between well-known and "exceptionally" well-known marks, which should be considered in future cases.
For further information on this topic please contact Elisenda Perelló at Grau & Angulo by telephone (+34 91 353 36 77) or email ([email protected]). The Grau & Angulo website can be accessed at www.gba-ip.com.
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