MIND THE GAP! The Potential Power Of Marks With Reputation

A very recent decision of the EU General Court highlights the potential power of marks which enjoy a reputation even if the claimant in this particular case suffered a temporary setback before the Court.

A normal registered trade mark entitles the owner to object to the use or registration of a later mark where the marks are either identical or similar and the goods or services are either identical or similar such that the relevant consumer would be confused into believing that there was a connection between the marks – in short hand usually referred to as the existence of a risk of confusion.

An important threshold for success is that the goods or services must be at least similar to some degree. If there is no similarity, there cannot be a risk of confusion, even if the marks are identical or highly similar. For example, according to EU trade mark case law, wine glasses and wine are dissimilar products. Accordingly, even if the marks were exactly the same, the owner of the wine brand cannot win a claim based on a risk of confusion against a wine glass producer who uses the identical trade mark because the Court will say that the goods at issue are dissimilar.

Likelihood of Confusion Test Works Well

Generally, this approach works well because it makes sense to say that consumers are not likely to be confused where there is no similarity in goods or services. If I register my trade mark for, say, recruitment services, I should be entitled to prevent another business owner from using the same or similar mark for recruitment services or similar business services but there is no good reason why I can claim that consumers will be confused if another business uses its mark for different goods or services such as, say, custard or electric lamps.

However, the owner of a mark with a reputation enjoys a potentially much broader scope of protection. In fact, depending on the strength of its reputation, it can prevent the use or registration of a later mark for completely different goods or services. This gives the owner of a mark with a reputation a potentially powerful weapon in the enforcement of its intellectual property rights.

Let’s go back now to that recent General Court decision.

The Polish firm PP Gappol filed an EUTM application for a figurative mark featuring the word element GAP Pol for furniture in class 20, clothing and related items in class 25 and furniture repair in class 37.

GAP Objects to GAP Pol 

Gap (ITM) Inc (“Gap”), owner of the well-known GAP retail brand filed opposition against classes 20 and 25 before the EUIPO. It relied on its EUTM registration of the word mark GAP which is protected for clothing, footwear, and headgear in class 25 and it claimed both a likelihood of confusion as well as unfair advantage by virtue of the reputation enjoyed by its registered trade mark GAP in the European Union.

At first instance, the EUIPO Opposition Division agreed with Gap that use of the figurative mark GAP Pol in relation to clothing products amounted to a risk of confusion and so it rejected the EUTM application in class 25. However, it rejected the opposition to furniture in class 20.

Both sides appealed to the EUIPO Board of Appeal. Gap Pol appealed the rejection in class 25 and Gap appealed the rejection of its opposition against class 20.

The EUIPO Board of Appeal upheld Gap’s appeal, agreeing both that there was a risk of confusion for clothing in class 25 and that Gap’s reputation in the EU for its GAP mark entitled it to succeed also against furniture in class 20.

In particular, the Board of Appeal accepted Gap’s evidence that it enjoyed a reputation under its GAP mark for clothing products in the United Kingdom. It went on to agree that use of the figurative mark GAP Pol would take unfair advantage of the reputation or distinctiveness of the trade mark GAP. It held that use of the mark GAP Pol would give PP Gappol an unfair advantage in the marketing of its furniture products in the sense that it could benefit from the reputation and image of GAP in order to enhance sales of its own furniture products. On this basis, the Board of Appeal upheld the opposition against furniture products in class 20.

Although Gap’s reputation under its GAP mark concerned clothing products, it succeeded before the EUIPO Board of Appeal in preventing the registration of the mark GAP Pol for furniture products, which are of course completely dissimilar to clothing. This was achieved because of the reputation enjoyed by the GAP brand.

Although the legal battle continued to appeal to the EU General Court with the result that the case was sent back to the EU Board of Appeal so that the EU Board can consider issues it should have dealt with but failed to. Namely, whether the GAP brand enjoys a sufficiently strong reputation or a sufficiently high degree of distinctiveness. In the meantime, the decision has been annulled.

We shall have to wait and see whether the EU Board of Appeal now decides that Gap enjoys a sufficiently strong reputation (or sufficiently high degree of distinctiveness) under GAP in the EU to win under the reputation ground of opposition.

The two important take home points here are:

• if you can prove that your trade mark enjoys a reputation – especially by concrete documentation such as annual reports, news or magazine or online reports or other independent evidence – you can significantly widen the scope of protection of your intellectual property rights which can be a valuable tool in preventing another trader from taking unfair advantage of your trade mark, even for dissimilar goods or services;
• in clearing a new trade mark for use or registration, it is important to take into account that if you choose a mark which is the same or similar to a well-known or reputed trade mark even in a different market sector, the owner of the well-known or reputed brand can potentially win a challenge to your registration or use.

It is always advisable, therefore, to consult an IP or trade mark professional like us here at Azrights whenever you are considering adopting a new trade mark. We can help to identify such potential obstacles to use or registration of your mark, including obstacles from sometimes unexpected sources, such as unrelated market sectors. MIND THE GAP!