Tiffany's application cut short by disposable tableware manufacturer

The Second Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) has upheld an opposition by the owner of the French device mark TIFANY for plastic and disposable tableware against Tiffany & Co's application to register the three-dimensional shape of its blue box bearing the word mark TIFFANY & CO for fine cutlery.

Well-known US jeweller Tiffany sought to register the three-dimensional shape of its blue box as a trademark for, among other things, cutlery made from precious metals and household or kitchen utensils and containers, glassware and porcelain in Classes 8 and 21 of the Nice Classification.

Emballages Mixtes et Plastiques SARL (EMP) filed an opposition on the basis of its earlier French figurative TIFANY trademark for, among other things, plastic plates and goblets, and paper napkins in Classes 8, 16, 17 and 21.

The Opposition Division upheld the opposition stating that Tiffany's goods were either identical or to a certain degree similar to EMP's. Moreover, the Opposition Division held that the word mark TIFFANY was the dominant element in the application due to the inherent weakness of the three-dimensional element - a simple blue box. The trademark owed its distinctiveness to the verbal element TIFFANY, which led to a likelihood of confusion.

In its appeal, Tiffany argued, among other things, that the Opposition Division had disregarded the figurative elements of the earlier trademark as well as the fact that Tiffany's trademark (i) is a three-dimensional trademark in colour, and (ii) the TIFFANY mark and name have a worldwide reputation.

The Board of Appeal shared the conclusion reached by the Opposition Division. The board found that (i) EMP had sufficiently proved genuine use of its earlier mark, and (ii) the discrepancy between the earlier mark as registered and how it had been used did not alter the distinctive character of the mark in the form in which it was registered.

Further, the board held that the earlier mark has a normal inherent distinctiveness for the goods in question, and disregarding the aesthetic function of cutlery made of precious metals, the goods at issue had a certain degree of similarity as both disposable tableware and cutlery made of precious metals are for serving and eating meals at a table.

Lastly, the board underlined that the three-dimensional shape and the colour blue of the junior mark are so common that the word element will be the dominant and distinctive component. Moreover, the reputation of Tiffany's sign - the level of which was not clear in relation to the relevant French public - would not overcome any conceptual, visual and phonetic similarities between the marks.

Florian Schwab, Boehmert & Boehmert, Munich