The Complexity of Series of Trademarks
To the scarce European case law on series of trademarks now the
Uniweb judgment has been added. In this judgment the
European Court of Justice ("ECJ") gave the Court a cuff
on the ear because the Court too easily set aside an earlier
decision of the OHIM, in which a claim under a series of trademarks
was granted. The ECJ has emphasized that such an opposition or
infringement claim under a series of trademark requires complex
assessments of fact, and referred the case back to the Court. The
judgment does not provide a fundamentally new perspective on series
of trademarks, but does warn the court deciding questions of fact
to actually weigh all relevant factual aspects, using the test set
out in the Bainbridge judgment.
Opposition Against UNI Trademarks
In 2001, the Italian bank UniCredito submitted an application for
two Community word marks, namely UNIWEB and UNICREDIT WEALTH
MANAGEMENT, both in class 36 for banking and financial services.
The German company Union Investment Privatfonds GMbH, active in
asset management, filed an opposition against both applications.
This opposition was filed on the basis of three older German
trademarks, UNIFONDS, UNIRAK and UNIZINS, which are also registered
in class 36, for investment funds. Union argued that the two
trademark applications of UniCredito are confusingly similar to its
earlier trademarks. It relied in this respect on, inter
alia, the existence of a series of trademarks.
Series of Trademarks
A series of trademarks means a range of trademarks of
the same holder in which the same element always recurs. In the
Bainbridge judgment (2007) the ECJ ruled that the existence
of such series of trademarks may be relevant to the assessment
relating to the likelihood of confusion: after all, the public
might (wrongly) believe that the sign used by a third party is part
of the series. It is, however, a requirement in this respect that
the earlier trademarks that are part of the series are actually on
the market. After all, if this is not the case, the consumer cannot
perceive the common element in the series and then associate it
with another trademark containing the same element. In the event of
an opposition the opponent may (of course) only rely on a series if
it has based its opposition on the trademarks forming the series
(Mobilix judgment, ECJ 2008). Finally, it has been confirmed
in the Ferrero judgment (2009) that in the event of a series
of trademarks there is a greater likelihood of confusion than
normally.
OHIM and the Court
The OHIM deemed it proven – in two instances – that
Union is using the three trademarks, and established that there is
a series containing as a common element the prefix 'UNI'.
Due to the fact that the two trademark applications of UniCredito
also start with the prefix 'UNI', the public may link these
to the series of trademarks of Union and there is a likelihood of
confusion. Therefore, the oppositions were granted.
UniCredito lodged an appeal with the Court. In short, the Court
held that the OHIM had failed to execute the test of Article 8 (1)
under (b) of the CTMR sufficiently carefully. The OHIM had not made
a thorough analysis of the link connection between the series of a
trademark on the one hand, and the trademark applications on the
other hand. The OHIM had only established that the trademarks
applied for consist of two elements of which the first (UNI)
corresponds to the series and the second (WEB and/or WEALTH
MANAGEMENT) has no distinctive character. The Court, on the other
hand, was of the opinion that the mere prefix UNI in itself cannot
be a designation of origin and is not sufficient to associate the
applications with the series. The Court added some other
considerations to this. Newspaper clippings have been submitted
from which it appears that other funds are also using the prefix
UNI. It also appears from these clippings that the name of the
company is always mentioned at the top of the list of funds; this
does not make it really imaginable that the public would be
confused about the origin. Finally, there is a semantic difference
between the trademarks compared because in the earlier trademarks
the second element is a German term and in the two trademark
applications it is an English term. The Court concluded that there
is no question of likelihood of confusion and rejected the
oppositions.
Is it Possible to Lodge an Appeal with the ECJ?
UniCredito lodged an appeal with the ECJ. The first
(formal) question was whether – in view of the nature of the debate
– this was actually possible. After all, the ECJ cannot redo the
factual assessment and only adjudicates legal questions. However,
the issues put forward were expressed in such a way that the ECJ
felt free to adjudicate them. UniCredito argued that the Court
wrongfully did not take the perception of the German public into
account; if that is the case, this is a legal error because all
relevant factors are to be taken into account in the event of a
likelihood of confusion. The OHIM argued that the Court had
misrepresented its earlier analysis; this is also a (possible)
legal error.
The Court Reprimanded
The material adjudication of the ECJ comes down to a
distinct reprimand for the Court. The Court indeed simplified and
thus prejudiced the argumentation of the OHIM. The OHIM did
actually (in two instances) make a detailed analysis of relevant
factors. For instance, the OHIM established that the earlier
trademarks and the two trademark applications have the same
structure (UNI + addition), that the common element UNI has no
direct meaning for the German consumer that is connected to
financial services (and is therefore distinctive), and that the
addition ‘WEALTH MANAGEMENT’ in the second trademark applied for
has a descriptive character. By ignoring all this the Court has
insufficiently stated the reasons for its decision to set aside the
earlier decision.
By contrast, in its own adjudication the Court actually assumed
too easily that a likelihood of confusion was excluded, and paid
insufficient attention to all relevant circumstances of the case.
It did not pay attention to the structure of the trademarks and the
influence of the prefix UNI on the perception of the public. The
Court assumed that the element UNI has no distinctive character
without substantiating such properly. On the basis of certain
factual facts the Court assumed that the public could not be of the
view that financial services offered originated from a different
provider, but the Court wrongly ignored that the public might think
that the services originated from economically linked companies. It
is true that the Court established a difference in the language of
the added word element (German versus English), but it did not
investigate whether this removed the risk that the two new
trademarks would be considered as belonging to the series of
trademarks of Union. It also did not investigate whether the word
elements added are possibly descriptive or non-distinctive.
The Court therefore concluded too easily that there was no
question of a likelihood of confusion and wrongfully set aside the
earlier decision of the Board of Appeal of the OHIM. The ECJ
referred the case back to the Court for a renewed adjudication,
with the following consideration: “In this case, the global
assessment of the likelihood of confusion implies complex
assessments in order to verify whether there is, as the Board of
Appeal of the OHIM found, a risk that the relevant public might
believe that the trademarks applied for are part of the series of
trademarks cited by the appellant”.
The judgment is therefore a warning not to draw conclusions
about the likelihood of confusion too rashly, let alone if a
reliance on a series of trademarks must also be taken into account.
On grounds of the criterion of the Bainbridge judgment, all
relevant circumstances of the case must be named and weighed.