General Court considers how far reputation may extend in relation to dissimilar goods/services

In The Tea Board v Office for Harmonisation in the Internal Market (OHIM) (Cases T-624/13, T-625/13, T-626/13 and T-627/13, October 2 2015), the General Court has considered the extent to which The Tea Board could rely on earlier Community collective trademark registrations to prevent registration of four later Community trademark (CTM) applications for figurative marks of which the dominant component was the word 'Darjeeling'. The case gives a detailed and interesting analysis of how far reputation may extend in relation to dissimilar goods and services if the evidence is sufficiently compelling.

In 2006 and 2009 The Tea Board had registered the word mark DARJEELING and a figurative mark containing the word 'Darjeeling' and a stylised profile view of a woman’s head, both covering “tea” in Class 30 of the Nice Classification, as Community collective trademarks.

In October 2010, Delta Lingerie applied to register four CTM applications for figurative marks of which the dominant component was the word 'Darjeeling' for goods in Class 25 (primarily underwear), related retail and other services in Class 35, and telecoms services in Class 38.

The Tea Council opposed the applications under Articles 8(1) and 8(5) of the Community Trademark Regulation (207/2009) on the basis that the marks and goods and services were similar, and that the applications took unfair advantage of, or caused detriment to, the reputation of the earlier marks. In June and July 2012, the Opposition Division of OHIM rejected the oppositions, finding that:

• the respective goods and services were dissimilar and that Article 8(1) was therefore inapplicable; and
• The Tea Council had filed insufficient evidence to establish the necessary reputation under Article 8(5).

In July and August 2012 The Tea Council appealed against the decisions, and in September 2013, the Second Board of Appeal of OHIM dismissed the appeals, essentially upholding the conclusions of the Opposition Division. The Tea Council appealed to the General Court.

Whilst it would have been reasonable to conjoin these cases because they deal with the same issues, the General Court issued separate judgments.

Unsurprisingly, in each case, the court held that the respective goods and services were dissimilar and dismissed the plea under Article 8(1). Considering the nature of those goods and services, it is difficult to see how it could have reached a different conclusion.

Considering Article 8(5), at great length, the court emphasised that the Board of Appeal had based its decisions on a “hypothetical premise” that the earlier marks had an “exceptional reputation”, which the court concluded was inappropriate because the board should have analysed the evidence filed by The Tea Board with the intention of proving reputation.

The court held that, if the earlier marks did indeed have an exceptional reputation, the positive qualities evoked by the word element 'Darjeeling' could be transferred to, and “strengthen the power of attraction” of, the later marks.

Specifically, the court held that this was applicable to all of the goods in Class 25 and the retail services in Class 35, but not to the Class 38 services in the absence of any evidence in support of this. The court therefore partially annulled the board's decisions, giving specific directions to the board to re-examine the evidence and arguments in order to determine whether The Tea Council proved that either of the earlier marks had a reputation.

The court went on to give further guidance, stating that:

• if, on re-examination, the board found that The Tea Council had not proved reputation of the earlier trademarks, it would have to dismiss the appeals;
• if the board found that the reputation established was less than exceptional, it would have to examine whether it would be possible to establish a link in the mind of the public between the marks and reach a definitive conclusion, failing which it would again have to dismiss the appeals; and
• if the board concluded that the evidence showed an exceptionally strong reputation, it would have to conclude that the appeals should succeed in relation to the aforementioned goods and services in Classes 25 and 35.

Via four long, separate judgments, the General Court has issued four essentially identical decisions. However, the essential elements of these judgments, namely the proper consideration of evidence intended to establish a claim under Article 8(5), are likely to be useful for practitioners and trademark owners seeking to ensure that their evidence of reputation is as strong as possible at first instance. We now await the Board of Appeal’s decisions and its examination of the evidence of reputation. In the meantime, it is interesting to note that Delta Lingerie already has CTM registrations for the word mark DARJEELING.

Chris McLeod, Elkington & Fife LLP, London