Failure to provide evidence of harm to mark's renown likely to be fatal to Article 8(5) opposition

In Éditions Quo Vadis v Office for Harmonisation in the Internal Market (OHIM) (Case T-517/13, October 29 2015), the General Court has rejected an opposition, brought under Article 8(5) of the Community Trademark Regulation (207/2009), to registration of the word mark QUO VADIS as a Community trademark. This decision demonstrates the challenges faced by parties seeking to rely on Article 8(5) in opposition proceedings.

A Spanish applicant sought to register the trademark QUO VADIS for goods and services in Classes 29, 33 and 35 of the Nice Classification, primarily for foodstuffs, alcoholic beverages, and advertising and retailing of foodstuffs via a computer network. This was opposed by a French company, Editions Quo Vadis, based on the two earlier national French marks QUO VADIS for goods and services in Classes 9, 38, 42, including "data processing equipment; software", as well as in Class 16 covering “paper and paper goods, etc". The opponent relied on grounds based on Articles 8(1)(b) and 8(5) of the regulation.

The Opposition Division of OHIM rejected the Article 8(1)(b) objection, contending that all the goods/services were dissimilar. However, the opposition based on Article 8(5) was upheld in respect of “alcoholic beverages” in Class 33 and “retailing including via global computer networks of alcoholic beverages, in particular wine” in Class 35. On appeal, the applicant convinced the Fourth Board of Appeal of OHIM to annul the decision of the Opposition Division. The board found that there was no link between the contested mark, which was used in relation to alcoholic beverages and the retailing of wine, and the earlier mark, which had only established a reputation in relation to “time planners”.

In seeking to annul the contested decision before the General Court, the French company argued that the Board of Appeal erred in finding that it was unlikely that the relevant public would establish a link between the marks, claiming that the board should have considered other factors, in addition to the similarity of the goods and services. It claimed that the strong reputation of the earlier mark and its highly distinctive character had not been taken into account. Other arguments posed were that the “image of youth” conveyed by their mark and the negative connotation conveyed by alcohol of the later mark constituted a detrimental association between the entities.

It was also submitted that the Board of Appeal should have taken into account French legislation which significantly restricts "direct or indirect" advertising in respect of alcohol. The opponent also argued that no legally valid justification of use of the sign QUO VADIS by the later trademark for alcoholic beverages had been provided and that the mark was therefore registered without due cause. OHIM disagreed and sought to dismiss the action.

The General Court held that, for an earlier trademark to be afforded broader protection under Article 8(5), the conditions to be satisfied were as follows:

1. The earlier mark had to be registered;
2. Both marks had to be identical or similar;
3. The earlier mark had to have a reputation; and
4. Use without due cause of the later mark led to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier mark, or that it might be detrimental to the distinctive character or the repute of the earlier mark.

Those conditions, the court reiterated, are cumulative and failure to satisfy one of them is sufficient to render the provision inapplicable (Sigla v OHIM (VIPS) (Case T-215/03) and Mülhens v OHIM (TOSCA BLU) (Case T-150/04)).

In the present case, the first three conditions were satisfied since the earlier mark is registered in France, the marks at issue are almost identical and the earlier mark has a reputation in France for "time planners" in Class 16. The court held that, in order to satisfy the fourth condition, it had to be established that, due to the similarity between the marks, the relevant public made a connection or link between them – despite not confusing the goods/services (Japan Tobacco v OHIM (Case C-136/08 P); Viaguara v OHIM (VIAGUARA) (Case T-332/10)). The existence of such a link must be assessed globally, taking into account factors such as:

• the similarity between the marks in question;
• the nature of the goods/services involved;
• the strength of the earlier mark’s reputation;
• the degree of the earlier mark’s distinctive character; and
• the existence of a likelihood of confusion on the part of the public.

If no such link is established, the applicant’s case fails.

The court held that no link had been established between alcoholic beverages and the retailing of wine (offered by the Spanish applicant) with time planning (offered by the French company). They had a completely different nature, purpose and method of use. Their producers and suppliers were active in completely different lines of business without the slightest overlap or link. The court upheld the Board of Appeal’s view that the consumers in question were entirely dissimilar.

Turning to the distinctiveness of the mark, the judge pointed out that the expression ‘quo vadis’ is a Latin phrase meaning ‘Where are you going?’ which was used by third parties in various sectors in connection with a variety of goods and services – therefore rendering it of “average” distinctiveness. The other arguments put forward by the French company, including tarnishment, were considered and rejected.

Dismissing the action, the court decided that the Board of Appeal was correct in finding that the fourth of the cumulative conditions for the application of Article 8(5) was not satisfied. The French company had failed to present evidence confirming the risk of harm being caused to the distinctiveness of the previously registered trademarks, and the evidence presented was insufficient to establish that the use of the contested mark would be harmful to the renown of the earlier mark. As regards the risk of the applicant reaping undue benefits from the distinctiveness or renown of the earlier trademarks, in this case, given the lack of connection between the goods and services concerned, no such danger existed.

This decision reinforces the need for opponents seeking to rely on Article 8(5) to be in a position to provide evidence of harm to the renown of their mark. Failure to do so is likely to be fatal to the opposition.

Sumi Nadarajah, FRKelly, Dublin