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(And Where Applicable, Earlier Mark) Comment GC T-243/16 Freddo

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(And Where Applicable, Earlier Mark) Comment GC T-243/16 Freddo August 2017 TRADE MARKS Decisions of the GC Ref no. Application (and where Comment applicable, earlier mark) GC The GC upheld the BoA's decision that there was a likelihood of confusion T-243/16 between the marks under Art 8(1)(b). Freddo SA v It was not disputed that the goods and EUIPO; Freddo - pastry and confectionary, services were identical or similar. Freddo, SL ices; ice; cones for ice cream, The BoA did not compare the marks at (18.07.17) dulce de leche, flavoured ices, issue by taking into consideration only frozen confections, frozen custards, frozen yoghurt, ice the word element 'freddo freddo' in the Reg 207/2009 cream, ice cream substitutes, earlier mark; the BoA in fact took into milk shakes, sherbet, and consideration all the elements of the sorbet (30) earlier mark. Further, the BoA was correct to conclude that 'freddo freddo' - services for providing food was the dominant element of the and drink; cafes, snack bars, earlier mark. food preparation, and ice cream parlours (43) The BoA was also correct to find that 'tentazione' would be assimilated to the French and Spanish laudatory terms 'tentation' and 'tentación' (meaning 'temptation') respectively, but that the term 'freddo freddo' would be meaningless to the French- and/or Spanish-speaking consumer. As such, 'freddo freddo' was the distinctive element of the mark. - milk products (29) The GC endorsed the BoA's assessment - preparations made from that both marks had a low degree of cereals, bread, pastry, and visual similarity and an average level of confectionary, ices; sauces phonetic similarity. The conceptual (condiments) (30) differences between the marks due to - ice cream parlour, coffee the word 'tentazione' in the earlier shop and snack-bar services mark were not considered relevant. (43) GC SAVANT The GC upheld the BoA's decision that there was genuine use of the mark T-110/16 - computer software (9) under Art 51(1)(a). Savant Systems - training services relating to The fact that SAVANT was also the LLC v EUIPO; databases, data processing, company name of Savant Group did Savant Group computers, information not prevent the sign from being used as Ltd apparatus and instruments; a mark. Similarly, the presence of a information and advisory (18.07.17) sub-brand used alongside SAVANT was services relating to the not sufficient to contest the genuine Reg 2o7/2009 aforesaid (41) use of the mark. - computer software services; Although a mark may not, as a rule, be computer programming affixed to services, there could, services; consultancy services nevertheless, be use in relation to the relating to computer software; services where the mark was used in analytical and research such a way that a link was established services including technical between the mark and the services. In analysis relating to computers this case the link was established as the and databases; information mark appeared in invoices, brochures, and advisory services relating adverts and articles. to the aforesaid (42) The BoA correctly decided that, on the evidence before it, there was genuine use of the mark in relation to the goods and services. GC The GC annulled the BoA's decision that there was no likelihood of T-521/15 confusion between the marks at issue Diesel SpA v - leather and imitations of under Art 8(1)(b). EUIPO; Sprinter leather, goods made of these The BoA erred in finding that only a megacentros del materials, umbrellas (18) small part of the relevant public would deporte, SL - clothing, football boots, rugby perceive the mark applied for as a (20.07.17) boots, training shoes, running capital 'D'. In fact, a non-negligible Reg 207/2009 shoes, tennis shoes, indoor part of the relevant public would sports shoes, headgear, belts perceive it as a stylised capital 'D'. (25) The overall shape and proportion of - gymnastic and sporting the marks at issue were similar. This articles and equipment (28) outweighed the slight stylistic differences between the marks that would only be grasped on a detailed examination. Consequently, there was a high degree of visual similarity - leather and imitations of between the marks at issue. leather, goods made of these The marks at issue were phonetically materials, umbrellas (18) and conceptually identical. - clothing, footwear, The GC held that, even if it was headgear (25) accepted that the earlier mark was weakly distinctive, there was a likelihood of confusion between the marks in respect of the goods at issue. Consumers of fashion and clothing goods were accustomed to seeing the same mark in different configurations which increased the risk of confusion or association further. GC The GC upheld the BoA's decision that there had been no genuine use of the T-309/16 mark under Art 51(1)(a). Cafés Pont SL v It was not disputed that the evidence of EUOPI; - coffee, tea, cocoa, sugar, rice, use exclusively concerned the product Giordano Vini tapioca, sago, artificial coffee, 'coffee'. SpA flour and preparations made The distinctive element of the mark (20.07.17) from cereals, bread, pastry and confectionery, ices, honey, was its figurative stylisation, such that Reg 207/2009 treacle, various condiments, use of a word mark alone could not spices (30) constitute use of the mark as registered, notwithstanding the tolerance afforded under Art 15(1)(a), namely that use of a mark which did not alter the distinctive character of the mark as registered may still amount to genuine use. The descriptive nature of the 'café' in respect of the goods at issue, enhanced the importance of the stylisation in the mark as a whole. As such, use of the words 'art's café' on invoices without the stylisation was insufficient to demonstrate genuine use of the mark. High Court refuses to make pre-trial reference to CJEU concerning own name defence and declines to grant stay under Article 104 Sky Plc & Ots v Skykick UK Ltd & Anr * (Birss J; [2017] EWHC 1769 (Ch); 13.07.17) Birss J refused to make a pre-trial reference to the CJEU on the question of the validity of Article 1(13) of Regulation (EU) 2015/2424, the effect of which had been to abolish the 'own name' defence for EU trade mark infringement in so far as it applied to corporate entities. The Judge also declined to stay the proceedings under Article 104. Sky is part of the well-known group of companies which provide a range of broadcasting, entertainment, digital internet telecoms and software services under the SKY brand. SkyKick provides cloud based IT migration, backup and management services to IT solution providers to assist them in migrating their customers' data into Microsoft's Office 365 cloud based platform. Sky brought proceedings against SkyKick for infringement of its EU and UK trade marks and for passing off in relation to SkyKick's use of the SKYKICK name. SkyKick applied for an order to make a pre-trial reference to the CJEU as to whether Article 1(13) of Regulation (EU) 2015/2424 was contrary to fundamental EU Rights and was therefore invalid. Birss J decided not to make the reference sought because: (i) SkyKick might win the action overall without any reference to the own name defence, particularly if the specifications of Sky's marks were cut down to what SkyKick contended were their proper scope; (ii) even if there was a finding of prima facie infringement at trial, the own name defence (including the question of honest practices in commercial and industrial matters) would have to be considered in relation to the alleged infringement of Sky's UK registered trade mark to which the abolition of the own name defence did not yet apply; (iii) the trial would consider the honest practices (or otherwise) of SkyKick and any reference made at that stage could be based on actual findings of fact based on proper evidence and argument; (iv) although SkyKick argued that it required commercial certainty given it was a start-up business dependent on external funding, the Judge was of the view that the best way to achieve an early resolution was to keep the action on track for a trial in early 2018; (v) the public interest in establishing the validity or otherwise of Article 1(13) was not a strong enough reason to make a reference at the pre-trial stage; (vi) if it turned out that the outcome of the dispute depended on the validity of Article 1(13) then at least the trial would have resolved all other issues by that point; and (vii) SkyKick's fear that Sky would obtain an injunction pending a reference if Sky were to succeed at trial was by no means inevitable. Birss J went on to decline to stay the proceedings under Article 104. Although Article 104 was engaged because SkyKick had brought applications at the EUIPO to invalidate SkyKick's EU trade marks, he considered that there were special grounds not to grant a stay. The decisive factors were the need for the trial in early 2018 to remain on track and the existence of the passing off and UK trade mark claims (particularly given the Judge's earlier findings in relation to the significance of the UK trade mark claim in determining the facts relating to SkyKick's alleged own name defence). Acquiescence and estoppel defences rejected Coreix Ltd ("CL") v Coretx Holdings Plc & Ots ("CHP")* (Mr Recorder Douglas Campbell QC; [2017] EWHC 1695 (IPEC); 11.07.17) The Judge held that CHP's use of the sign CORETX in both word and logo form infringed CL's COREIX mark under Sections 10(2) and 10(3) and constituted passing off.
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