Likelihood of confusion, similarity, prejudice to the notority of trademarks: judgment of the EU General Court of 21 April 2021, case T 44/20

Likelihood of confusion, similarity, prejudice to the notority of trademarks: judgment of the EU General Court of 21 April 2021, case T  44/20

By judgment of 21 April 2021, the General Court of the European Union ruled on the application of the Article 8(1)(b) and of the Article 8(5) of the of Regulation 2009/207 (amended by Regulation 2017/1001) in relation to the following case (Case: T 44/20)

In 2017 the applicant, Chanel, filed a notice of opposition against the registration of the EU mark 017248642 for goods in class 9 applied by Huawei Technologies Co. Ltd. The opposition was based, first, on the ground set out in Article 8(1)(b) of Regulation 2017/1001 and on the earlier French figurative mark 3977077 covering, inter alia, goods in class 9.

Second, the opposition was based on the ground set out in Article 8(5) of Regulation 2017/1001 and on the earlier French trademark 1334490 covering, inter alia, goods in classes 3, 14, 18 and 25.

The Opposition Division of the EUIPO rejected the opposition in its entirety and then the Fourth Board of Appeal of EUIPO dismissed the subsequent appeal.

The applicant requested the General Court to annul the decision of the Fourth Board of Appeal of EUIPO in so far as it state that there was no likelihood of confusion on the part of the relevant public in relation to the earlier mark, within the meaning of Article 8(1)(b) of Regulation 2017/1001, and in so far as it states that the first of the conditions for the application of Article 8(5) of Regulation 2017/1001, namely that concerning the identity or similarity of the signs at issue, was not satisfied, given that the mark applied for was different from the allegedly reputed mark.

The action has been rejected in its entirety by the Court for the following reasons.

In view of the previous case law, for an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, three conditions must be satisfied: the marks at issue must be identical or similar; the earlier mark cited in opposition must have a reputation; and there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Those three conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable.

In the present case, as regards the visual and the conceptual comparison of the marks at issue, the mark applied for and the allegedly reputed mark were considered different by the Court. In this regard, contrary to the allegation of the applicant that it would be permissible to take account of the different orientation of one of the signs if it corresponds to the perception which, irrespective of the intentions of its proprietor, the public may have of it when the mark is affixed to goods on the market, the Court confirmed that the comparison between the signs can be carried out only on the basis of the shapes and orientations in which those signs are registered or applied for. Since the first condition mentioned above is not granted, the provision of the Article 8(5) of Regulation No 207/2009 was not applied.

In addition, the Court established that, in the present case, marks were dissimilar overall and that the provision of the Article 8(1)(b) of Regulation No 207/2009 was inapplicable.

In particular, in view of the previous case law, in so far as the signs at issue are not similar, the other relevant factors for the global assessment of the likelihood of confusion cannot under any circumstances offset and make up for that dissimilarity and therefore there was no need to examine them. Consequently, the second plea in law was rejected and, accordingly, the action was dismissed in its entirety.

Serena Biondi

Covid-19 – Time limits in proceedings before the International Bureau of WIPO

Covid-19 - Time limits in proceedings before the International Bureau of WIPO

On April 9, the WIPO International Bureau issued a statement that interprets the current circumstance of global COVID-19 disruption as falling under PCT Rule 82quater.1 providing for excuse of delay in meeting PCT time limits (which may relate to the submission of documents and/or the payment of fees) due to reasons of force majeure. Namely, the current global pandemic should be considered to be a “natural calamity …. or other like reason”. The International Bureau of WIPO urges all PCT Offices and Authorities to likewise adopt this interpretation.

The International Bureau of WIPO will treat favorably any PCT Rule 82quater request made citing COVID-19 related issues and not require evidence to be provided that the virus affected the locality in which the interested party resides. Again, the International Bureau of WIPO urges PCT Offices and Authorities to do likewise.

Although this provision would not be an effective remedy in a situation in which an international application had lost its legal effect as a result of having been declared considered withdrawn, for example, for having failed to pay the appropriate fees within the prescribed time limit, the receiving Office of the International Bureau of WIPO has decided to delay the issuance of any such notifications until May 31, 2020.

Furthermore, the International Bureau of WIPO recommends that:

a. for at least one further month (potentially to be further extended), such notifications should only be issued in relation to deadlines which have expired over two months previously; and

b. receiving Offices waive the charging of late payment fees under PCT Rule 16bis.2.

See the full statement.

Covid-19 – Suspension of time limits in proceedings before the Italian PTO – Extension to 15 May 2020

The legislative decree of 08.04.2020, No. 23, has extended to 15 May 2020 the time period of proceedings affected by the suspension of time limits in proceedings pending before the Italian PTO.

Namely, for the calculation of all the time limits in the proceedings pending before the Italian PTO (and concerning Italian IP rights), including the time limits related to proceedings for oppositions to registration of Italian trade marks, the period that is included between 23 February and 15 May 2020 will not be taken into account.

Time limits related to appeal proceedings before the Board of Appeal remain excluded from the suspension.

Andrea Scilletta

UPC – Negative decision by the German Federal Constitutional Court

UPC - Negative decision by the German Federal Constitutional Court

With a non-unanimous decision, the German Federal Constitutional Court held today that the Act of Approval to the Agreement on a Unified Patent Court is void (see the decision).

Personally, I hope that from the rubble caused by recent events, including this decision, the EU can build a better European integration, within which there is also a more solid and shared package of legislative measures for a Unitary EU patent and a Unified Patent Court.

Andrea Scilletta

Covid-19 – Suspension of time limits in proceedings before the Italian PTO – Update

The legislative decree of 17.03.2020, No. 18, has extended both the time period and the type of proceedings affected by the suspension of time limits in proceedings pending before the Italian PTO (already established with the previous decree of the Ministry of Economic Development of 11.03.2020).

Namely, for the calculation of all the time limits in the proceedings pending before the Italian PTO (and concerning Italian IP rights), including the time limits related to proceedings for oppositions to registration of Italian trade marks, the period that is included between 23 February and 15 April 2020 will not be taken into account.

Time limits related to appeal proceedings before the Board of Appeal remain excluded from the suspension.

As regards payment of annuities and renewals, IP rights expiring between 31.01.2020 and 15.04.2020 remain valid until 15.06.2020. To extend the duration of an IP right beyond 15.06.2020, it will then be necessary to comply with the provisions of the Italian IP law (e.g. by paying the due annuity by 15.06.2020).

See the notice at the Italian PTO website and the Legislative decree (only in Italian language).

Andrea Scilletta

Covid-19 – Extension of periods in proceedings before the EPO and the EUIPO

 

Both the EPO and the EUIPO have extended periods for all parties and their representatives.
The EPO has decided that periods expiring on or after 15 March 2020 are extended for all parties and their representatives to 17 April 2020. In accordance with Article 150(2) EPC this applies also for international applications under the PCT. The above period may be further extended by the publication of another Notice in case the dislocation due to the measures adopted in Europe to stop the spread of Covid-19 extends beyond 17 April 2020 (see Notice from the EPO).
The EUIPO has decided that all time limits expiring between 9 March 2020 and 30 April 2020, that affect all parties before the Office, are extended to 1 May 2020 (see EUIPO Decision).