EUIPO declares Banksy’s ‘Flower Thrower’ trade mark invalid
The famous graffiti artist’s trade mark was cancelled on the grounds that it was filed in bad faith.
This case (Case C-564/16P) originated back in 2013 when Gemma Group, an Italy-based machine manufacturer, applied for the following EU trade mark depicting a jumping feline-like animal covering goods in Class 7, namely, machines for processing of wood, machines processing aluminium and machines for treatment of PVC.
The Application was opposed by the fellow feline-leaping advocate, Puma SE (Puma), who claimed that the Application was in conflict with its earlier international registrations for the following figurative marks:
(‘the Earlier Marks’)
The Earlier Marks cover goods in Class 18 (bags to wear over the shoulder and travel bags; trunks and suitcases, especially for apparatus and sportswear), Class 25 (clothing, boots, shoes and slippers) and Class 28 (games, toys, equipment for physical exercise, equipment for gymnastics and sports (not included in other classes) including sports balls) i.e. goods dissimilar to those in the mark applied for.
The ground relied upon in support of the opposition was Article 8(5) of Regulation No. 207/2009 (‘the Regulation’).This ground affords somewhat broader protection to marks which have a reputation in the European Union by not limiting the potential for conflict to goods and/or services which are deemed to be similar.
…upon opposition by the proprietor of an earlier trade mark…the trade mark applied for shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
In order for this higher level of protection to apply, it must be proved that the mark(s) in question have a reputation and that use of the contested mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark(s).
As part of its evidence, Puma referred to a number of earlier decisions of the EU Intellectual Property Office (EUIPO) in which reputation in the Earlier Marks had been found. However, Puma’s arguments were rejected by the Opposition Division who deemed that, in the proceedings in hand, the marks’ reputation had not been sufficiently proved and who, crucially, refused to acknowledge its previous findings on this point. The decision was upheld by the Fifth Board of Appeal who maintained that references to the earlier decisions were too vague and imprecise to be duly relied upon and, in any event, that the EUIPO was not bound by its previous decision-making practice.
By application lodged at the General Court (‘GC’) in 2015, Puma brought an action for annulment of the decision. It argued, inter alia, that in rejecting its evidence of reputation and departing from its previous decisions on this point, the EUIPO had infringed the principles of legal certainty and sound administration.
Finding in favour of Puma, the GC concluded the following:
The EUIPO appealed to the Court of Justice of the European Union (CJEU) challenging, in particular, the finding that reasons ought to have been provided for departing from its previous decisions and accusing the GC of itself transgressing the principle of sound administration by suggesting that it would have been proper to request supplementary evidence.
In a ruling of June this year, the CJEU dismissed the appeal. Upholding the decision of the GC, it restated that there were no specific formal requirements to follow when providing evidence of reputation. Therefore, since Puma had referenced the earlier decisions in its pleadings, the EUIPO was under an obligation to consider, with especial care, whether it should decide in the same way or not. Further, in the event that it was to depart from its previous decision-making practice, the EUIPO could not justifiably do so without stating its reasons.
The decision is an interesting one; on the one hand, the GC and the CJEU have repeatedly stated that each case must be assessed on its own merits and that earlier decisions, therefore, do not have binding effect. But on the other hand, we are told that the relevant bodies are also under an obligation to consider, with especial care, those decisions already made and the impression is that these can only really be departed from under special circumstances, that must be explained.
The decision has been made in the interests of legal certainty, but some might say the position still remains unclear. If you would like any advice on trade mark protection, please get in touch to speak to one of our attorneys.