Zorro Productions fails to prevent registration of ZORRO for tobacco

European Union
In Zorro Productions Inc v Bleich (Case 337/2008, March 19 2009), theFourth Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) has dismissed an opposition against the registration of the trademark ZORRO for tobacco products in Class 34 of the Nice Classification
In 2003 Jens and Jürgen Bleich filed an application for the registration of ZORRO as a Community trademark (CTM) for tobacco products. Zorro Productions Inc opposed the application based on several earlier registered trademarks. In December 2007 the Opposition Division of OHIM dismissed the opposition in its entirety.
Zorro Productions appealed. First, it relied on three international registrations for the word mark ZORRO for goods in Classes 9, 14, 15, 25, 28, 30 and 31 (dated 1958). The board found that Zorro Productions had failed to indicate in the opposition form the member states in which the marks were protected. Moreover, no other documents had been filed as regards the missing information, such as the registration certificates of the international trademarks.  
Zorro Productions also relied on a French registration for the mark ZORRO (dated 1986) for goods in Class 34, for which proof of use was requested by OHIM. Zorro Productions had never used the mark directly for the relevant goods, but had concluded licensing agreements with third parties.
The board stated that proof of indirect use by third parties through licensing agreements may constitute a valid proof of use. However, in the present case, Zorro Productions had submitted evidence of a single licensing agreement and had failed to provide samples of the licensed goods. Moreover, the agreement referred only to a 'Z sign', and not to the trademark ZORRO. The board thus held that Zorro Productions could not rely on the French registration for the mark ZORRO.
In addition, Zorro Productions sought to rely on two figurative CTMs consisting of a representation of Zorro’s face and the word 'Zorro' for goods and services in Classes 3, 5, 9, 16, 24, 25, 28, 29, 30, 32, 35, 38 and 41. The board affirmed the decision of the Opposition Division, holding that none of the goods or services covered by the CTMs were similar to tobacco products.

Finally, Zorro Productions argued that its marks were well known under Article 8(5) of the Community Trademark Regulation (40/94). However, the board considered that although the character of Zorro is well known, the trademark ZORRO is not. The board recognized that the Zorro films are well known, but concluded that this reputation is not automatically transferred to any other products bearing the word 'Zorro'. Such issues are usually discussed in cases involving authors' rights, as the title of an artistic production has, in principle, no vocation to be protected as a trademark.
The appeal was thus dismissed
Arguably, Zorro Productions could have based its opposition on two additional grounds. First, Zorro Productions could have relied on use of the mark ZORRO in the course of trade (eg, as a domain name or as the name of a film character). Second, it could have argued that the CTM would be invalid in France under the 1991 Evin Law. If the CTM ZORRO was to be registered in France for goods in Class 34, it would automatically limit the scope of use of any ZORRO marks filed after 1991, as it would constitute indirect advertising of tobacco products.
Jean Philippe Bresson and Séverine Fitoussi, INLEX IP EXPERTISE, Paris

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