MARC AUREL application rejected despite good-faith use

In Richter v Department of Intellectual Property (February 27 2009), the Intellectual Property and International Trade (IP & IT) Court has held that the trademark MARC AUREL for goods in Classes 24 and 25 of the Nice Classification was confusingly similar to the mark MARC AUREL for goods in Class 21.
On April 27 2005 Reinhold Richter filed two applications for the registration of the trademark MARC AUREL for goods in Classes 24 and 25. The registrar rejected the applications on the grounds that Richter’s mark was visually and phonetically similar to German-based FX Nachtmann Bilcrystalwerk GmbH’s earlier trademark MARC AUREL, which is registered for goods in Class 21. On appeal, the Board of Trademarks affirmed the registrar’s decision. Richter filed a civil suit before the IP & IT Court.
Richter argued that its mark was not confusingly similar to the earlier MARC AUREL mark because the goods covered by the marks were not closely related. The registrar, as a witness for Richter, testified that the goods in Class 21 were miscellaneous items which were not considered to fall within the other classes, while the goods in Classes 24 and 25 were closely related to each other.
Additionally, Richter submitted an affidavit stating that his mark:
  • had been used in good faith for more than 30 years; and
  • had coexisted with the earlier MARC AUREL mark in Germany and many other countries under an agreement between Richter and Nachtmann.   
Richter further argued that MARC AUREL was not an invented phrase. According to dictionary definitions, 'marc' refers to the residue left after the juice has been pressed from apples or other fruits. Although 'aurel' has no particular meaning, Marc Aurel was the name of a Roman emperor. Therefore, Richter argued that he was entitled to use the MARC AUREL mark to identify his goods in Classes 24 and 25 insofar as such use did not cause confusion among the public.
The IP & IT Court disagreed, holding that the goods in Classes 21, 24 and 25 were all household items and were closely related to one another. Therefore, consumers of household appliances might be confused as to the origin of Richter's goods. By way of example, the court stated that consumers might be misled into believing that “table covers” and “washcloths” sold by Richter under the mark MARC AUREL originated from Nachtmann, as the latter sells “napkin rings” and “table utensils” under the same mark.
Arguably, the decision is questionable in that the court considered only the broad characteristics of the goods, but failed to take into account their actual function or purpose. Moreover, the court failed to take into consideration the fact that Richter had used the mark in good faith over a long period of time.
Varunee Ratchatapattanakul, Tilleke & Gibbins International Ltd, Bangkok

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