17th November 2023

Written by Milena Velikova

Trade Mark Attorney, Milena Velikova summarises a decision that turned on consumer understanding of brand collaborations. This article was written written for the Chartered Institute of Trade Mark Attorneys (CITMA) which you can access in the closing paragraph below.

Key points

Registrations of luxury brands with a reputation may have a broader range of enforceability due to the marketplace conditions and the expectations of consumers of collaborations between such brands.

The EUIPO may take judicial notice of the purchasing habits of the average consumer and of the expectations of consumers of collaborations between brands; however, submitting evidence of this is always advisable.

The detail

Jaguar Land Rover Ltd (Jaguar) opposed Philipp Plein’s (Plein’s) EU trade mark (EUTM) application for a tiger device, relying on its earlier registrations comprising jaguar devices. All relevant devices are shown via the link to the CITMA website in the closing paragraph below. The Plein application covered goods/services in classes 3, 9, 14, 18, 24, 25, 26, 28 and 35. The opposition was based on Articles 8(1)(b), 8(5) and 8(4) of the EU Trade Mark Regulation.

In short, the opposition under Article 8(1)(b) was dismissed because the goods and services were deemed to be dissimilar from those of Jaguar’s registrations. The opposition under Article 8(4) was also dismissed because it was based on passing off rights in the UK which are no longer a valid basis of opposition in the EU.

Article 8(5) basis

Article 8(5) allows owners of earlier registered trade marks with a reputation to object to a later mark where use of the later mark would be detrimental to the owner of the earlier mark, even if the goods/services are dissimilar. On inspection, the relevant marks were deemed visually and conceptually similar since both comprised an image of a feline predator’s head baring its teeth, with pointed, angular ears.

Jaguar claimed a reputation in respect of goods and services in classes 3, 9, 12, 14, 18, 24, 25, 26, 28, 35, 37 and 40, but the Opposition Division held, from the evidence filed, that its earlier marks only enjoyed a reputation in relation to vehicles in class 12, simply because the evidence submitted only related to those goods.

Contentious conclusion?

Arguably the most important (and contentious) position of the decision is the conclusion that the relevant consumers will be likely to establish a mental link between the signs in relation to most of the goods/services of the Application, apart from a small number of services in class 35 relating to wholesaling and retailing.

The Opposition Division concluded that although the contested goods and services are dissimilar to land vehicles in class 12, “It is common knowledge that consumers buying luxury cars are likely to also seek out expensive and exclusive goods, such as cosmetics, perfumery, electronic devices …”, citing KENZO ESTATE/KENZO.1 Further, the Board observed that consumers are “… also likely to seek out exclusive related services in connection with these goods”. The decision also involves a discussion on how luxury car brands collaborate with other luxury brands.

From that, the Board concluded that: “Many consumers are likely to think that there is a direct connection between the Applicant’s above goods and services on the one hand, and the famous luxury cars on the other hand, perhaps in the form of a licensing agreement”; and that, “The contested sign will, through its undeniable similarity with the earlier reputed trade marks, attract more consumers to the applicant’s goods and services, and will therefore benefit from the reputation of the earlier trade marks.” Finally, it stated that: “… the contested sign is likely to take unfair advantage of the distinctive character and repute of the earlier trade mark”.

The opposition was deemed successful under Article 8(5).

1 T-528/13, Kenzo v OHIM, General Court, 2nd December 2015

This article was written for the Chartered Institute of Trade Mark Attorneys (CITMA),  which can be read on their website in full here – where you can also view an image of the contested trade mark. Find out more about our brand protection experience here.