Gillette prevents registration of GILLETTE for Class 9 goods

The Gillette Company has prevailed in opposition proceedings against the registration of the trademark GILLETTE for “accumulators (electric), accumulators (electric) (for vehicles), batteries (torch), batteries (electric); battery casings, plates (accumulator), charging devices (electric battery), AA batteries” in Class 9 of the Nice Classification by proving the reputation of its GILLETTE mark in Lithuania (November 27 2012).

On July 28 2011 Gillette (United States) filed an opposition (No PTZ-31) with the Appeal Division of the Lithuanian State Patent Bureau, requesting that the latter refuse to grant protection in the Republic of Lithuania to the trademark GILLETTE (International Registration 1072563), owned by Obshchestvo s ogranichennoy otvetstvennost’yu “Shest’ banok” (Russia).

Gillette based its opposition on the following national and Community trademarks (CTMs):  

• GILLETTE (Lithuanian Registration 7892), with a priority date of January 27 1993, registered for “cosmetics, toiletries, soaps, shampoos, hair care products, antiperspirants and deodorants for personal use” in Class 3, and “office supplies, writing instruments” in Class 16;
• GILLETTE (Lithuanian Registration 7972), with a priority date of January 27 1993, registered for “razors” in Class 8; and
• GILLETTE (Community trademark Registration 006665319), with a priority date of February 11 2011, registered for “soaps; perfumery, essential oils, body and beauty care preparations, hair lotions, dentifrices” in Class 3 and “razors and razor blades; shaving instruments, dispensers, cassettes and cartridges, all containing blades; parts and fittings for all the aforesaid goods” in Class 8.

The Appeal Division upheld the opposition and refused to grant protection in the Republic of Lithuania to International Registration 1072563 based on two grounds set forth by the Lithuanian Trademark Law, namely Articles 7(1)(7) and 7(3):

• Article 7(1)(7) provides that the registration of a mark shall be declared invalid if the mark is identical with, or similar to, an earlier Community trademark (CTM) and is to be, or has been, registered for goods and/or services which are not similar to those for which the earlier CTM is registered, where the earlier CTM has a reputation in the European Community and where the use of the later trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier CTM.
• Article 7(3) provides that the registration of a mark may be declared invalid where it becomes evident that the application for the registration of a mark was made in bad faith.

The decision was based on the following arguments.                                                                 

First, the Appeal Division noted that the overall visual impression created by the compared trademarks was basically the same, as the marks consisted of the same word element, ‘Gillette’. The fact that this element was in a bold font in the opposed mark was considered to be a non-essential factor which did not influence the similarity between the marks. Phonetically, the marks were held to be identical, because they would be pronounced in the same way. Conceptually, the marks were not comparable, since the word ‘Gillette’ has no meaning.

Taking into account the foregoing, it followed that the opposed mark GILLETTE was identical to Gillette’s trademarks (Lithuanian Registration 7892, Lithuanian Registration 7972 and CTM Registration 006665319).

The Appeals Division noted that the evidence submitted by Gillette enabled it to come to the conclusion that the CTM GILLETTE had a reputation in respect of the goods (razors, shaving tools, shaving instruments, and cosmetics used before, after or during shaving) specified by Gillette. This evidence proved that the trademark GILLETTE had a sufficiently large market share and had been widely advertised. The reputation of the GILLETTE mark was also illustrated by the ratings achieved by the mark: between 2001 and 2010, GILLETTE was among the leading beauty brands and was ranked in the list of the world's most famous/most valuable brands.

The possibility to take unfair advantage of, or be detrimental to, the distinctive character or repute of an earlier CTM can be caused by a certain degree of similarity between the earlier and the later mark, by virtue of which the relevant section of the public makes a connection between the two marks - that is to say, it establishes a link between the marks even though it does not confuse them (see the judgment of the Court of Justice of the European Union (ECJ) in Intel Corporation Inc v CPM United Kingdom LTD (Case C-252/07)). In the present case, it was reasonable to assume that such a connection existed between the marks because the opposed mark was almost identical to the opponent’s mark, which is known by a large section of the public. The opposed mark would thus be associated with the earlier mark, thus gaining an unfair advantage and benefiting from the reputation and good name of the earlier mark. Therefore, the opposition succeeded under Article 7(1)(7).

Second, the Appeal Division turned to the applicant’s alleged bad faith. The ECJ has noted that, when assessing an applicant’s bad faith, the national courts must take into account all factors relevant to the circumstances of the case concerned, prevailing at the moment of submitting the application to register the sign as a CTM, including:

• the fact that the applicant knows, or must know, that a third party is using, in at least one member state, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought;
• the applicant’s intention to prevent that third party from continuing to use such a sign; and
• the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration was sought (see the judgment of the ECJ in Chocoladefabriken Lindt and Sprüngli AG (Case C-529/07)).

In Lindt, the ECJ also stated that, with regard to the first factor, a presumption of knowledge may arise from general knowledge of use of an identical or similar sign in the economic sector concerned, and that knowledge can be inferred from the duration of such use. In the present case, Gillette’s trademark GILLETTE had been widely used over a long period of time and, therefore, it could reasonably be assumed that the applicant was aware of Gillette’s earlier marks. The applicant sought protection for a mark that was almost identical to an earlier CTM having a reputation. According to the evidence provided by Gillette, commercial attractiveness was created for the applicant’s goods due to a possible association with an earlier mark with a reputation.

The evidence submitted by Gillette also confirmed that the applicant used other well-known marks, suggesting that the latter systematically committed actions contrary to the law.

Based on the foregoing circumstances, the Appeal Division concluded that the applicant had unfairly sought protection for the trademark GILLETTE. Therefore, the opposition also succeeded under Article 7(3).

Vilma Dauskurdienė, AAA Baltic Service Company - Law Firm, Vilnius