Case T-477/04
Aktieselskabet af 21. november 2001
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)
(Community trade mark – Opposition proceedings – Application for Community word mark TDK – Earlier Community figurative mark TDK – Earlier national word or figurative marks TDK – Relative ground for refusal – Reputation – Taking unfair advantage of the distinctive character or the reputation of the earlier mark – Article 8(5) of Regulation (EC) No 40/94)
Summary of the Judgment
1.Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation
(Council Regulation No 40/94, Art. 8(5))
2.Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation
(Council Regulation No 40/94, Art. 8(5))
3.Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation
(Council Regulation No 40/94, Art. 8(5))
1.In order to satisfy the requirement of ‘reputation’ within the meaning of Article 8(5) of Regulation No 40/94 on the Community trade mark, which extends the protection of an earlier reputed mark to non-similar goods or services, the earlier national or Community mark must be known to a significant part of the public concerned by the goods or services covered by that trade mark. In examining that condition, it is necessary to take into consideration all the relevant facts of the case, in particular the market share held by the mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.
(see paras 48-49)
2.Article 8(5) of Regulation No 40/94 on the Community trade mark, which extends the protection of an earlier reputed mark to non-similar goods or services, allows, inter alia, the owner of the earlier reputed trade mark to oppose registration of trade marks likely to take unfair advantage of the distinctive character or the reputation of the earlier mark. That unfair advantage must be understood as encompassing instances where there is clear exploitation and free-riding on the coat-tails of a famous mark or an attempt to trade upon its reputation. The stronger the earlier mark’s distinctive character and reputation, the easier it will be to accept that detriment has been caused to it.
(see para. 65)
3.There is a non-hypothetical future risk that use of the word mark TDK, registration of which as a Community trade mark is sought for ‘clothing, footwear, headgear’ under Class 25 of the Nice Agreement, will take unfair advantage, for the purposes of Article 8(5) of Regulation No 40/94 on the Community trade mark, of the figurative mark TDK, previously registered as a Community trade mark, and of the word mark TDK and the word and figurative mark TDK, previously registered in 12 Member States, for products in Class 9 of that Agreement (in particular, ‘apparatus for recording transmission or reproduction of sound or images’). Since the earlier marks have an enhanced distinctive character by reason of the reputation attached to them, it is reasonable to consider, based on the sponsorship activities of the owner of those marks, particularly in the sporting field, that use of the mark applied for on sports clothing – a possibility which cannot be ruled out – would lead to the perception that that clothing was manufactured by, or under licence from, that owner.
(see paras 66-67)