Commercial use in the market as evidence of unfair advantage – A brief comment on the GC decision “Master Cola”
The 11th of December 2014 the General Court rendered the judgment T-480/12, “Master Cola”, which considers relevant the evidence of actual use in the market of a filed trademark, in order to prove unfair advantage of the distinctive character or the well-known reputation of prior trademarks in accordance with Article 8(5) of the Community trade mark Regulation (EC) No 207/2009 (CTMR).
The facts are the following:
The company Modern Industrial & Trading Investment Co. Ltd (Mitico) filed the figurative Community Trademark application (CTM) “MASTER” before the Office for Harmonization in the Internal Market (OHIM) for classes 29, 30 and 32 of the Nice Classification.
The Coca-Cola Company filed a notice of opposition against the said community trademark for all the classes, based on four earlier figurative trademarks “COCA-COLA”, registered for identical and similar products and services. The grounds alleged in support of the opposition were those referred to in Article 8(1)b) and Article 8(5) of the CTMR.
The confronted trademarks are reproduced below:
The Opposition Division rejected the opposition in its entirety, as well as the later notice of appeal that the opponent filed before the same office, reason why The Coca-Cola Company decided to take the case to the General Court, being OHIM the defendant and the trademark applicant intervener party.
With the case already before the General Court, the applicant raised a single plea in law, divided into two parts, based on the infringement of Article 8 (5) of the CTMR.
In relation to the referred Article, OHIM considered in first place that, even taking into account the well-known reputation of the earlier trademarks and the identity of the products and services, the said article was not applicable because there was no similarity at all between the confronted signs, given that both consisted of completely different words (MASTER/COCA-COLA). The General Court, however, determined that it did exist sufficient similarity between the signs in order to apply Article 8(5) of the CTMR since the Board of Appeal of OHIM had actually admitted the existence, at least, of certain level of similarity between them in relation with the similar “tail” incorporated to the letters “c” and “m” and due to the fact that both signs used a similar Spenserian script. Moreover, adds the Court, even though, in principle, verbal elements should be considered more distinctive than figurative elements, this principle is subject to exceptions, depending on the circumstances, as it was finally considered in this case.
In the second place, and this is, in particular, the important issue here, the applicant submitted evidence of the commercial use of the mark applied for by the intervener party, which was refused by OHIM alleging that, in the context of Article 8(5) of the mentioned Regulation, it must only be taken into consideration the mark as it is applied for. The referred evidence included printed screen shots from Mitico’s website which showed non-alcoholic drinks bearing the trademark Master together with other elements in a way that the global impression of the packaged product was very similar to the one arising from a typical Coca-cola product.
According to settled case-law, a finding of a risk of free-riding may be established, in particular, on the basis of logical deductions resulting from an analysis of the probabilities — so long as they are not mere suppositions — as well as by taking into account the usual practices in the relevant commercial sector including all the other circumstances of the specific case. In particular, the Court of Justice in its judgment ruled that, “that case-law therefore in no way limits to the mark applied for the relevant evidence to be taken into consideration for the purposes of establishing a risk of free-riding (the risk that unfair advantage will be taken of the distinctive character or the repute of the earlier trade marks), but allows account also to be taken of any evidence intended to facilitate that analysis of the probabilities as regards the intentions of the proprietor of the trade mark applied for, and — a fortiori — any evidence relating to the actual commercial use of the mark applied for.”
This intriguing judgment certainly contravenes the usual conduct followed by the offices, which seem to have adopted the rule of only considering the trademarks as they are registered when solving disputes, being this conduct, as far as we understand, inappropriate when applied automatically, without weighing the particular circumstances of each case.
After this judgment, which seems to clarify a controversial issue, the next step is to wait and see how courts and offices apply the General Court’s observations in the future.
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