Appleyard Lees

Warning: not for bambinos.

In Italian, BAMBINO is the word for a “baby” or “infant” but it’s clear from a recent case C-482/15, Westermann Lernspielverlage v EUIPO that trying to get it as a trade mark is not child’s play.  In this case it has meant 6 years of squabbling, first in the EUIPO (European Union Intellectual Property Office), then the General Court and finally the CJEU (Court of Justice of the European Union).

The owner of the earlier BAMBINO trade mark opposed an application for a new BAMBINO trade mark.  The owner of the new trade mark then applied to revoke the earlier mark.

The main issue was whether the revocation of the earlier mark on which the opposition was based had to be taken into account on appeal.  As the revocation action was filed after the EUIPO reached a conclusion in the opposition, the CJEU was not convinced it did.

The case

The owner of the earlier trade mark was Diset, S.A. (Diset) and the trade mark applicant was Westermann Lernspielverlage GmbH (Westermann).  Their trade marks, which were considered in the decisions, are:

Bambino

Diset opposed Westermann’s trade mark application on the basis there was a likelihood of confusion between the trade marks (article 8(1)(b) of Council Regulation (EC) No 207/2009 (EUTMR)).  Diset was partially successful and the opposition was upheld for goods in classes 9 and 28 and for some of class 16.  Westermann appealed this initial refusal and the EUIPO appeal board overturned the decision for some of class 9.  However, Westermann was not going to give up that easily.

Shortly after the EUIPO appeal board reached its decision, Diset’s mark hit its 5th birthday, which means it became vulnerable to revocation if it had not been genuinely used.  Westermann used this as a chance to strike back and applied to revoke Diset’s trade mark on the grounds of non-use.  The challenge worked and Diset’s mark was revoked, so Westermann appealed to the General Court, seeking for the partial refusal of its mark in the opposition to be annulled.  The General Court dismissed the appeal.

It is clear why Westermann considered the revocation challenge should have been taken into account as Diset’s trade mark was revoked, so the basis for the opposition decision no longer existed. Westermann submitted to the CJEU that by failing to take account of this fact:

  • breached its right to be heard and the right to a fair trial as the General Court would not adduce relevant evidence; and
  • was an error of law and distorted the facts as the Diset’s earlier mark did not have any effect at the time, having been revoked.

However, appeals are for a review of whether there was an error of law or issue of competence as of the date a decision was made.  They are not a re-examination of the facts.  Whilst Diset’s mark was partially revoked when the General Court reached a decision, and cancelled when the CJEU reached a decision, the relevant date was when the revocation action was filed which was after the decision of the EUIPO appeal board.  Therefore, the General Court was not required to take it into account and both of Westermann’s grounds for appeal at the CJEU were dismissed.

Our conclusion

In this case, it would not have been possible for Westermann to challenge Diset’s mark on non-use grounds before the EUIPO reached its initial decision but this is an apt reminder to:

  • take action as quickly as possible; and
  • continue to revisit strategy throughout a dispute and stay on the look out for any chinks in the armour of an opponent.

After all, despite everything our mothers taught us, trade marks aren’t always something that can be “shared nicely”.

 

 

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