Jackson International Trading Co. Kurt D. Brühl GmbH & Co. KG V OHIM
ECFI, 6.07.2012 :
- Parties: Jackson International Trading Co. Kurt D. Brühl GmbH & Co. Kg v. OHIM
- Subject: Reputed trademark
- Trademarks: ROYAL SHAKESPEARE c/ RSC-ROYAL SHAKESPEARE COMPANY
Jackson International Trading Co. Kurt D. Brühl GmbH & Co. KG filed the EC trademark ROYAL SHAKESPEARE for goods and services in classes 32, 33, and 42, in particular beer.
Three years after the registration of the mark, The Royal Shakespeare Company filed a cancellation action on various grounds, in particular its EC verbal mark RSC-ROYAL SHAKESPEARE COMPANY, registered principally for theatrical performance services in class 41.
The Cancellation Division of OHIM dismissed the cancellation action. This decision was reversed by the Board of Appeal, which held the mark at issue to be void, because the prior mark RSC-ROYAL SHAKESPEARE COMPANY enjoyed an exceptional reputation in the United Kingdom in the field of theatrical activities and related fields (educational services, organisation and promotion of cultural events, educational and training services in the field of theatre).
The European Court of First Instance (ECFI) confirmed that the prior mark enjoyed a reputation with a large audience, or even the broader public as a whole, and that this reputation was sufficient to establish a reputation at the level of the European Union, as the UK constitutes a substantial part of the EU.
It held that there was a risk of association between the marks because of a high degree of similarity, and that no other company uses the expression "Royal Shakespeare".
The ECFI went on to hold that the broader public would not fail to associate the two marks despite the differences in the nature of the products and services covered, due to proximity and a certain connection between them, and, more particularly, the complementary link between entertainment services and beer. The judges noted in fact that it is common for bar and restaurant services to be offered in theatres, before and after the performance, and during the intermission.
The ECFI concluded that the mark at issue unduly profits from the power of attraction, reputation, and prestige of the prior mark for its own products, as consumers would associate the two marks, procuring a commercial advantage with respect to competing products.
The appeal was dismissed.