European Union Trade Mark Registration
Recently the General Court, acting as a first instance of the European Court of Justice issued a judgement, which refers to the trade mark registration in the European Union, describing the relevant provisions, as well as the procedure, allowing EU trade mark registration.
The competent office, providing the so-called service - registration of trade marks in the EU, is The European Union Intellectual Property Office (EUIPO). So, on 12 December 2012, Hot-Can Intellectual Property filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Regulation No 207/2009 on the European Union trade mark. Afterwards, on February 2013 The EU trade mark application was published in Community Trade Marks Bulletin.
As a result, several months later on, a notice of opposition was filed by Monster Energy Company, established in Corona, California (United States) against the registration of the EU trade mark on ground – Regulation 207/2009 and in particular Art. 41, which deals with the notice of opposition to registration of the trade mark in the European Union.
Assessment of the similarity between two marks means more than taking just one component of a composite EU trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its component.
A year later on the responsible department in the EUIPO, The Opposition Division, rejected the claim, filled by Monster Energy Company, regarding the EU trade mark registration. That is the reason why subsequently the Monster Company filed a notice of appeal, pursuant to Regulation 207/2009, before the Board of Appeal of EUIPO against the previous rejection, done by the opposition division. Nevertheless, The Board of Appeals found, that trade marks at this issue were visually dissimilar and there is no need Hot-Can Intellectual Property to refuse the EU trade mark applied for.
In the present case, it must be found, as EUIPO contends, that the existence of a possible reputation of the earlier marks was not examined by the Board of Appeal. The latter indeed found that one of the cumulative conditions for applying Article 8(5) of Regulation No 207/2009, namely, the existence of a connection between the sign applied for and the earlier mark, was not satisfied on the ground that the signs were dissimilar overall. Consequently, the applicant’s assertion that the Board of Appeal acknowledged that the earlier mark enjoyed a significant reputation is incorrect.
At the end the court decision dismissed the action and orders Monster Energy Company to pay the costs.
This case and all of the facts, involved in, show a palette of issues, related to the Trade Mark Registration in the European Union.
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