Rock band prevents registration of identical mark for tobacco

European Union

In Not Us Limited v Spectrum Enterprise General Trading LLC (Opposition B1786766), the Opposition Division of the Office for Harmonisation in the Internal Market has rejected an application for registration of the mark U2 for goods in Class 34 of the Nice Classification, including tobacco, on the basis that it would take unfair advantage of the repute and the consistent selling power of the earlier mark of the rock band U2.

The applicant, Spectrum Enterprise General Trading, applied to register the mark U2 for “tobacco; smokers’ articles; cigarette cases” in Class 34. The opponent, Not Us Limited, filed an opposition under Article 8(5) of the Community Trademark Regulation (207/2009), claiming that:

  • it had rights to an earlier identical mark that has a reputation in the European Union; and
  • use of the mark applied for would take unfair advantage of, be detrimental to, the distinctive character or repute of the earlier mark. 

The opponent filed a substantial amount of evidence to demonstrate that its U2 mark enjoyed a reputation at the time of filing of the contested application. The opponent argued that the use of the identical mark in relation to the goods applied for would lead to a dilution and/or tarnishment of its earlier mark. 

The applicant did not file observations in support of its application or in reply to the evidence presented on behalf of Not Us Limited.

The Opposition Division summarised the requirements of Article 8(5) in three parts:

  • The marks must be either identical or similar;
  • The earlier mark must have a reputation; and
  • Encroachment upon reputation, which occurs when one or more of the following situations arise:
    • use of the later mark would take unfair advantage of the distinctive character or repute of the earlier mark (ie; free-riding);
    • use of the later mark would cause detriment to the repute of the earlier mark (ie, tarnishment); and
    • use of the later mark would cause detriment to the distinctive character of the earlier mark (ie, dilution). 

The Opposition Division accepted that the respective marks were identical. In relation to the reputation of the earlier mark, it held that the opponent had succeeded in proving that its earlier mark enjoyed a reputation at the time of filing of the contested application, and that this was attested by independent and diverse sources. The evidence indicated that the band U2, its performances and recordings were widely known on an international scale at the date on which the contested application was filed, and that the reputation stretched over a 30-year period. 

In relation to proving the third requirement of Article 8(5) (encroachment upon reputation), the Opposition Division confirmed that, if the opponent was able to establish that there was a future risk - which was more than hypothetical - of the application taking advantage of, or causing damage to, the earlier mark in any one of the three way referred to (ie, tarnishment, free-riding and/or dilution), it would be enough to bring Article 8(5) into play (see Spa-Finders (Case T-67/04) at Paragraph 40). 

With reference to case law, the Opposition Division found that the relevant public could be led to believe that goods bearing the trademark U2 were produced under control or licence of the opponent. Based on the identity between the marks, the considerable and longstanding reputation of the earlier mark and the overlap of the relevant public, it was likely that, by using the U2 mark the applicant would take unfair advantage of the repute and the consistent selling power of the earlier mark. Unfair advantage would arise from the introduction of its own mark upon the public, who knows the earlier mark well, and without incurring any great risk or costs of launching a totally unknown mark on the market. 

The Opposition Division also noted that advertisement for tobacco has been banned on television within the EU member States since 1991, and the Tobacco Advertising Directive, which took effect in July 2005, extended the ban to cover other forms of media. Although the enforcement of these laws would not prevent the registration of the mark in the present case, it would prohibit, on a large scale, its advertising. Accordingly, the unfair advantage that the applicant was seeking to obtain by introducing an identical mark for tobacco products, on a market on which the advertisement for these products was severely restricted, was even more noticeable. 

The Opposition Division thus considered the opposition to be well-founded under Article 8(5) and rejected the application.

Gavan Ferguson, FRKelly, Dublin     

FRKelly acted for the opponent in this case

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