Reputation of Royal Shakespeare Company's marks held to be "exceptional"

In Jackson International Trading Co v Office for Harmonisation in the Internal Market (OHIM) (Case T-60/10, July 6 2012), the General Court has upheld a decision of the First Board of Appeal of OHIM in which the latter had found that the word mark ROYAL SHAKESPEARE was invalid.

On October 24 2003 Jackson International Trading Co obtained a Community trademark (CTM) for the word mark ROYAL SHAKESPEARE covering goods in Classes 32, 33 and 42 of the Nice Classification (including alcoholic beverages). 

In October 2006 the Royal Shakespeare Company (RSC) filed an application for a declaration of invalidity at OHIM. It based the application on the following provisions (using current references in the Community Trademark Regulation (207/2009)):

• Article 8(5) (unfair advantage/detriment) on the basis of its earlier community word mark RSC - ROYAL SHAKESPEARE COMPANY and a UK registered trademark depicted below;
  
• Article 8(4) on the grounds that UK national law would allow it to prevent use of the contested mark under the law of passing off; and
• Articles 7(1)g) and 7(1)(h) (trademarks of such a nature as to deceive the public, eg as to the nature, quality or geographical origin of the goods/trademarks which have not been authorised by the competent authorities and should be refused pursuant to Article 6ter of the Paris Convention). 

In 2009 the RSC's application was rejected by the Cancellation Division on the basis that, although the RSC had a significant reputation in relation to theatre productions, and the RSC's marks and the contested mark were visually, conceptually and phonetically "highly similar", the services for which the RSC's marks had a reputation were remote from the goods/services for which the contested mark had been registered. 

On this basis, the Cancellation Division did not believe that the RSC's marks would be recognised by the average public (outside the theatre-going public). It considered that it was possible that the relevant beer-drinking public would associate the contested mark with the playwright and not the RSC. As a result, it held that the RSC had not established that the contested mark would be detrimental to the distinctive character of the RSC's marks or that the sale of alcoholic drinks would tarnish the image of the RSC. Given this, the contested mark was unlikely to take undue advantage of the distinctive character or repute of the RSC's marks. The Cancellation Division held that the RSC had not established that its marks had acquired goodwill in the field of restaurant services. It also rejected the RSC's Article 7(1)g) and 7(1)(h) arguments on the basis that:

• Jackson's use of the word 'royal' has a laudatory meaning and would not lead consumers to believe that there is royal patronage; and
• 'royal' is also not a state emblem or hallmark indicating the control/warranty of the United Kingdom.       

This decision was overturned on appeal to the Board of Appeal. The board found there was a strong likelihood of unfair advantage being taken of the repute of the RSC's marks. It held that the earlier CTM RSC-ROYAL SHAKESPEARE COMPANY had an "exceptional" reputation in the United Kingdom, which "constitutes a crucial part of the European Union in the mind of the public at large", both in the field of theatrical activities and the related field of "educational services", "organising and promoting of cultural events" and "education and training services all relating to theatre". Having found the contested mark invalid on this ground, the board declined to deal with the RSC's arguments in relation to Article 7(1)(g) and (h) or its earlier unregistered rights under the law of passing off. 

Jackson appealed to the General Court on the Article 8(5) ruling. The court upheld the board's decision on the following grounds:

• The word combination 'Royal Shakespeare' was unique and the combination of the words 'Royal' and 'Shakespeare' created a distinctive sign, the entirety of which is reproduced in the contested mark, so that the signs are visually, conceptually and phonetically similar, so as to create a link in the mind of the consumer and a likelihood of association.
• The relevant public was the general public, as the RSC's theatrical productions are aimed at the public at large, and the prices for admission are no higher than tickets for the cinema, or other cultural or sporting leisure activity.
• The board was right to assess the scope of the RSC's marks' reputation as "exceptional" in the United Kingdom for theatre productions. The board was also right to hold that reputation of the RSC's marks in the United Kingdom was sufficient to establish a reputation at EU level, as the United Kingdom is a substantial part of the European Union (applying PAGO International (Case 3-301/07));
• While the services covered by the RSC's marks are not directly and immediately linked to the RSC's theatre productions, there is a certain proximity between them arising from the presumed link between entertainment and beer, as well as the common practice of serving alcoholic beverages in theatres either side of a theatrical performance and in the interval. The public at large would make a link with the RSC when seeing a beer bearing the contested mark in a supermarket and Jackson would therefore benefit from the power of attraction, prestige and reputation associated with the earlier RSC marks; and
• Jackson had given no reason justifying taking this unfair advantage and, therefore, the unfair advantage had been taken without due cause.  

In the United Kingdom, the RSC had failed to persuade the UK Intellectual Property Office to reject Jackson's equivalent UK Madrid designation for the mark ROYAL SHAKESPEARE in 2000. However, in October 2011 it succeeded in revoking it for non-use. Having failed to establish genuine use of its mark from the date of registration for the requisite five-year period, Jackson also failed to show that there were proper reasons for non-use. In the absence of any sales of alcoholic drinks by reference to its UK mark, and in contrast with the statements in Ansul BV v Ajax (Case C-40/01), that advertising may constitute genuine use where it relates to goods or services already marketed or about to be marketed, Jackson's attempts to rely on evidence of its negotiations with potential business partners, consisting of "at best" highlighting "the availability of a mark that may be licensed", were not sufficient to constitute genuine use "consistent with the essential function of a trademark. It is not creating or preserving an outlet for the goods" (per hearing officer Morris (O-369-11)).

Vanessa Marsland and Anna Blest, Clifford Chance LLP, London