Family mark protection examined by ECJ

In Il Ponte Finanziaria SpA v Office for Harmonization in the Internal Market (OHIM) (Case C-234/06 P), the European Court of Justice (ECJ) has upheld decisions by OHIM and the Court of First Instance (CFI) rejecting the opposition against the registration of the sign BAINBRIDGE.

In 1998 Marine Enterprise Projects (now FMG) applied to register the figurative sign BAINBRIDGE as a Community trademark.

The sign depicted a roll of cloth unfurling to take the form of the sail of a small sailing boat against a thick horizontal line above which the word 'Bainbridge' appears in cursive letters. Registration was sought for goods in Classes 18 (eg, leather, imitation leather, animal skins, hides, trunks and cases) and 25 (clothing, footwear and headgear) of the Nice Classification.

Il Ponte Finanziaria SpA opposed, citing a number of its earlier Italian trademarks and arguing a likelihood of confusion. The earlier marks consisted of the word mark THE BRIDGE and two families of marks - one figurative and one three-dimensional - registered for goods similar to those covered by FMG's application.

The OHIM Opposition Division rejected the opposition on the basis that none of Ponte's marks was sufficiently similar to the mark applied for. The Board of Appeal agreed, ruling that the principle of interdependence between the similarity of goods and signs (ie, the more similar the goods are, the less similar the marks need to be in order to establish a likelihood of confusion) was irrelevant in this case since the minimum degree of similarity between the parties' respective marks was not present.

Ponte appealed to the CFI, which dismissed the appeal. In the CFI's view, it was only when the Board of Appeal examined the argument that there was a 'family' of marks that it established that only two of those marks had been put to use and could therefore be taken into account in that assessment. However, the board had expressly affirmed that the earlier trademarks were not individually subject to proof of use because the five-year period following their registration, during which use must be proved, had not yet elapsed. The board thus concluded that the earlier marks had to be taken into consideration for the purpose of assessing the existence of a likelihood of confusion with the trademark applied for.

So far as the likelihood of confusion with a family of marks was concerned, Italian consumers were confronted on the market with only two of these earlier marks. Therefore, the extended protection claimed by Ponte, which was connected with the existence of an alleged family of marks, was not justified in this case.

The CFI also held that the earlier mark THE BRIDGE could be regarded as being in genuine use only if it was objectively present on the market in a manner that was effective, consistent over time and stable in terms of the configuration of the sign. The court found that such genuine use had not been proved.

As to the other earlier trademarks that were not taken into account for the purposes of assessing the likelihood of confusion, the board was entitled to reject what was described as the 'defensive' registration of these marks: the effective function of trademark registration is to protect marks that are intended to be used, not to prevent registration by others.

The CFI concluded that Ponte's marks were similar to FMG's marks only remotely, whether taken individually or as a family.

Ponte appealed to the ECJ, which dismissed the appeal. The ECJ found as follows:

• The CFI's assessment of the similarity of the marks was well based and thus the ECJ could not substitute its own assessment of the facts for that of the CFI.
  
  
• The CFI was entitled to conclude that the fundamental lack of similarity of the respective marks was not offset by the high degree of similarity of the respective goods.
  
  
• A trademark may be registered only individually. The minimum five-year protection afforded by such registration is conferred on it only as an individual trademark, even where several trademarks having one or more common and distinctive elements are registered at the same time.
  
  
• No consumer can be expected, in the absence of use of a sufficient number of trademarks capable of constituting a family or a series, to detect a common element in such a family or series and/or to associate another trademark containing the same common element with that family or series. Accordingly, in order for there to be a likelihood that the public may be mistaken as to whether the trademark applied for belongs to a family or series, the earlier trademarks must be present on the market.

Jeremy Phillips, IP consultant to Olswang, London