Sponsorship use allows for wider protection

In Aktieselskabet af 21 november 2001 v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has upheld an opposition to the registration of the mark TDK for clothing, footwear and headgear in Class 25 of the Nice Classification.

Aktieselskabet af 21 november 2001 applied to register the TDK mark with OHIM. TDK Kabushiki Kaisha (TDK Corp) opposed, citing not only an earlier Community trademark, but no fewer than 35 earlier national trademarks registered for goods in Class 9 ("apparatus for recording transmission or reproduction of sound or images"). Some of its earlier marks consisted of the letters 'TDK'; others were for a figurative mark.

Not surprisingly, OHIM's Opposition Division found that there was no likelihood of confusion within the meaning of Article 8(1)(b) of the Community Trademark Regulation, since the parties' respective goods were not identical, similar or even complementary. The opposition was, however, upheld under Article 8(5) on the basis that Aktieselskabet's mark, without due cause, was taking unfair advantage of the repute or distinctive character of TDK Corp's marks. Aktieselskabet appealed unsuccessfully to the Board of Appeal.

Upholding the Board of Appeal's decision, the CFI dismissed Aktieselskabet's appeal.

Part of Aktieselskabet's appeal was based on the contention that TDK's earlier marks did not have so great a reputation as to be entitled to Article 8(5) protection. Agreeing with the board's decision to assess evidence of TDK Corp's large-scale commercial sponsorship interests, the CFI stated as follows:

"The Board of Appeal found that both the commercial and sponsorship activities referred to ... extended throughout Europe and required the investment of substantial amounts of money, time and effort. It also held that the sponsored events were often televised or recorded, thereby ensuring wider exposure of the earlier marks to the public."

This shows how important commercial sponsorship can be in helping to establish and preserve protection for a trademark even in respect of categories of goods and services for which it has not been registered.

Jeremy Phillips, IP consultant to Slaughter and May, London