Use of 'OsCar' by insurance company held to infringe well-known OSCAR mark
The Court of Appeal has issued an injunction preventing the defendant from using the sign 'OsCar' in the course of trade (Case AR No 2009/AR/2273) (the decision is final; a link to the English translation can be found here).
The Academy of Motion Picture Arts and Sciences ('the academy') has been organising the famous annual Oscar ceremony since the late 1920s to promote extraordinary achievements in the film industry. The event has grown to become one of the most star-studded events in the world, with film stars and directors from across the globe contending for one of the golden-plated Oscar statuettes.
The academy owns several trademarks seeking to protect the repute of the Oscars, including the Community word mark OSCAR, registered for “conducting an annual award ceremony recognising exceptional achievements in the film industry, and giving people the incentive to excel in the film industry through the awarding of prizes”.
To reward safe drivers in the context of car insurance contracts, Belgian bank and insurance company DVV came up with a bonus-malus system under the name OsCar. The system was also promoted using a statuette and the slogan “And the OsCar goes to…”.
The academy brought an action for injunctive relief, arguing that DVV sought to exploit the repute of the Community trademark (CTM) OSCAR and that it was causing detriment to the distinctive character of the mark under Article 9(1)(c) of the Community Trademark Regulation (207/2009). While the judge at first instance had found no infringement, the Court of Appeal of Brussels came to different conclusion in a motivated decision of May 25 2013.
The Court of Appeal first addressed the two counterclaims filed by DVV seeking to have the CTM revoked.
DVV contended that the word 'Oscar' had become a common name in the trade to denote any kind of prize, and that such evolution resulted from the "inactivity” of the academy (Article 51(1)(b) of the regulation). The conditions of this provision are cumulative. The claim was denied on the ground that, irrespective of whether the mark was the common name for those services, any evolution that the mark may have undergone was not, in any event, due to inactivity on the academy's part. According to the court, it was obvious that the academy had been very active in defending its rights and that it had regularly objected to, or instituted proceedings against, infringing uses by third parties.
DVV also alleged that the academy had failed to make genuine use of the mark in the European Union within a continuous period of five years (Article 51(1)(a) of the regulation); this claim was mainly supported by the argument that the Oscars’ centre of business lies in Hollywood. The court did not agree and pointed out that, while the ceremony itself is exclusively held in Hollywood, that fact had little bearing on the finding that the actual services offered by the academy extend much further. According to the court, this was demonstrated by the award of the Best Foreign Language Film, for which the European film industry has been contending for decades, and the associated media coverage. This meant that the academy was actually creating a (very specific) outlet for those services in the European Union, which was not merely philanthropic.
As regards the infringement of the CTM OSCAR, the court held as follows:
- The word 'OsCar' retained an independent distinctive role within DVV's compound sign, even if it did not dominate the overall impression conveyed by it.
- The overall degree of visual and phonetic similarity between the marks was sufficient for the relevant section of the public to make a connection with the CTM OSCAR. This was reinforced by the media coverage of the bonus-malus system with the slogan “And the OsCar goes to…”.
- With regard to the different types of injury referred to in Article 9(1)(c) of the regulation, the finding of 'dilution' was the most apparent. Referring to the decision of the Court of Justice of the European Union in Interflora, the court noted that use of a similar sign was likely to contribute to turning the OSCAR mark into a generic term, which was sufficiently demonstrated by DVV's counterclaim alleging that 'Oscar' had become the common name for a prize.
Arguably, the courts are right to allow owners of reputed trademarks to prevent use of a similar sign if it is likely to reduce the distinctiveness of the mark, without them having to wait for the end of the dilution process - that is, the total loss of distinctive character.
Jeroen Muyldermans and Paul Maeyaert, ALTIUS, Brussels
The authors represented the Academy of Motion Picture Arts and Sciences in this case
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