Editor's note: 2010 years 2 month 9 day, Spanish company English Cut S. L. Apply for the registration of a word trademark "THE ENGLISH CUT" , And specify use in No 25 Class clothing and other goods. Dental shop EL CORTE INGLÉS (Hereinafter referred to as "House of England" ) According to the trademark used in Spanish characters "EL CORTE INGLÉS" File an objection to the application. OHIM (present EUIPO, European Union Intellectual Property Office) Appeal board decision, Word mark "THE ENGLISH CUT" and "EL CORTE INGLÉS" There is no similarity in pronunciation or appearance.

[background] 2010 years 2 month 9 day, Spanish company English Cut S. L. Apply for the registration of a word trademark "THE ENGLISH CUT" , And specify use in No 25 Class clothing and other goods. Spanish shop EL CORTE INGLÉS (Hereinafter referred to as "House of England" ) File an objection to the application, Based on its designation in No 25 Class and several other classes of goods and services to use the registered Spanish word trademark "EL CORTE INGLÉS" And several EU graphic trademarks. The legal basis for the dissent petition includes, "European Community Trade mark Regulation (The first 207/2009 No) " (Hereinafter referred to as "Eu trade mark regulation" ) The first 8 (1) (b) article (Risk of confusion may arise) Sum control 8 (5) article (Well-known reputation trademark) . This objection and subsequent appeal were denied. British Palace cited trademark OHIM (present EUIPO, European Union Intellectual Property Office) Appeal board decision, Word mark "THE ENGLISH CUT" and "EL CORTE INGLÉS" There is no similarity in pronunciation or appearance. The two share only minor conceptual similarities, Does not constitute a similar trademark, Therefore, the disputed trademark application is not violated "Eu trade mark regulation" The first 8 (5) article. The British Palace then appealed to the EU General Court (General Court) An appeal was also rejected. The court agreed with the appeal board's finding that the two trademarks were not the same. In addition, The court held that, Although the British Palace brand enjoys a very high reputation, But because the trademarks in question are not similar, Therefore, this case cannot be applied "Eu trade mark regulation" The first 8 (5) article.

[conclusion] European Court of Justice (Court of Justice) Hear the appeal of the English Court, Overturning a general court decision, The reason was the wrong application of the law, "Just like it (General court) As stated in the judgment... The degree of similarity between the contested symbols is evident from the facts of the case, Insufficient to apply "Eu trade mark regulation" The first 8 (1) (b) article, therefore "Eu trade mark regulation" The first 8 (5) The application requirements of the article were also not met in this case" . Therefore, The case was remanded to the general court for retrial, A judgment is requested in the following dispute: "Considering the relevant facts in this case, For example, the prior trademark is well-known or enjoys a high reputation, Although the degree of similarity is very low, Does not constitute "Eu trade mark regulation" The first 8 (5) As stipulated in the article, Concerned members of the public believe there is a link between the two signs" ?

[comment] This verdict provides us with a summary "Eu trade mark regulation" The first 8 (5) Principle of application, And a golden opportunity to protect well-known trademarks. apply "Eu trade mark regulation" The first 8 (5) article, Three conditions need to be met. first, The disputed trademark and the prior trademark shall be identical or similar; second, The prior trademark enjoys a reputation; and, third, Use of a trademark without justification, Improper use of the reputation of the prior trademark or damage the significant distinction of the prior trademark. The point of this judgment is, The degree of similarity between disputed trademarks, Even if it doesn't apply "Eu trade mark regulation" The first 8 (1) (b) Requirement of strip, That doesn't mean it can't be applied "Eu trade mark regulation" The first 8 (5) Requirement of strip. Therefore, Even if the similarity between the disputed trademarks is not high, It is still possible for well-known trademarks to apply No 8 (5) Article seeking protection. Another important point of the European Court of Justice, "Eu trade mark regulation" The first 8 (5) Act of infringement as specified in the article——The trademark in dispute creates the impression to the concerned public that there is a link between the two——It is not required to reach the point where consumers establish a direct, immediate connection between the disputed trademarks. We agree with the European Court of Justice, Courts and trademark authorities are encouraged to adopt the following principles as pillars of trademark law. as "Consumer-friendly interpretation (in dubio pro consumer) " Principles are fundamental to consumer protection and advertising law, evaluation "Eu trade mark regulation" The first 8 (5) Is prohibited from registration, Why not follow similar principles, Or maybe it's called "Reputation-friendly interpretation (in dubio pro reputation) " principle?

compile: Liu Dan, Esabarry Legal Counsel source: Esabaril (ELZABURU)