Martínez Albainox, SL, v EUIPO. Case T‑341/19. General Court. 28 May 2020
On 28 May 2020, the General Court rejected Martínez Albainox, SL’s (“the Applicant’s”) appeal from a decision of the Fourth Board. The General Court found that the Applicant’s registration for a figurative mark including the word TASER (“the contested mark”) was likely to be confused with two earlier EU word marks for TASER. In addition, the registration of the contested mark would lead the public to link it with the well reputed earlier mark leading to a risk of unfair advantage. As a result, the General Court upheld the Fourth Board of Appeal’s decision that the contested mark should be cancelled.
Background
In 2014, the Applicant registered the contested mark in Class 8 for ‘Hand tools and implements (hand operated); cutlery; side arms; penknives, expressly not including shaving razors, shaving knives and shaving utensils’. In 2016, Taser International, Inc. the owner of the widely known TASER mark applied to invalidate the Applicant’s mark on the basis of its two EU word mark registrations for TASER that dated from 2005 and 2011 respectively (“the earlier mark”).On 21 June 2018, the Cancellation Division invalidated the Applicant’s mark on the basis that the earlier mark enjoyed a high degree of recognition, the signs were highly similar and that use of the word TASER in both marks would lead consumers to the link the marks which association would enable the contested mark to take advantage of the repute of the earlier mark contrary to Article 8(5) of Regulation 2017/1001.
The Applicant appealed and the Fourth Board of Appeal dismissed the appeal finding that there was a likelihood of confusion between the marks at issue under Article 8(1) (b) of Regulation 2017/1001 on the basis that the Class 8 goods ‘side arms; penknives’ were similar to an average degree to Class 13 ‘non-lethal electronic weapons’ goods covered in the earlier mark. The Fourth Board of Appeal agreed with the Cancellation Division’s findings in relation to Article 8 (5) of 2017/1001 Regulation. The Board also noted although the goods covered by the marks at issue were not similar, they were connected. Moreover, there was an overlap between the relevant publics, as ‘non-lethal electronic weapons’ may include self-defence devices targeted at the general public.
The Applicant sought to have the contested decision annulled and sought a declaration that the contested mark was valid for all the goods in Class 8. It firstly argued, that the electrical weapons covered by the earlier mark are sold to a specialised public whereas the goods covered by the contested mark were aimed at the general public and that as the relevant publics were distinct, there was no likelihood of confusion. Secondly, it disputed the fact that there was an overlap between the goods at issue. It argued that the hunting goods covered by the contested mark would not be sold in the same shops as ‘non-lethal electronic weapons’. It noted that the later goods are only sold on the proprietor’s website and are aimed at law enforcement agencies and are sold through different distribution channels. As a result, the Applicant claimed that the relevant public would not make a connection between the marks such as would amount to a “link” that might take advantage of the earlier mark’s repute.
Decision of the General Court
In relation to likelihood of confusion under Article 8(1)(b) the General Court noted that the Board of Appeal had only found a likelihood of confusion in respect of ‘side arms; penknives’ in Class 8. The General Court agreed with the Board’s findings in relation to similarity and the fact that both the goods under comparison may have the same target public because they are both likely to be purchased by law enforcement authorities or private security agencies who might assume in view of the high degree of similarity between the respective signs that they all come from the same proprietor. It therefore rejected the Applicant’s first ground of appeal.
In relation to the Applicant’s second ground under Article 8(5) of Regulation 2017/1001 the General Court noted that in order to establish the relevant link it is unnecessary for the relevant public to be consumers likely to use goods covered by both the earlier and later marks. It is only necessary that the public might call the earlier mark to mind when it sees the later mark. Applying this principle and after finding that the TASER mark was highly distinctive and enjoyed a reputation that went beyond the relevant public with regard to the goods for which it was registered, the General Court found that although the general public could not purchase the non-lethal electric weapons covered by the earlier mark, the public was well aware of the mark and of the products sold under it and consequently might very well make the necessary connection.
The General Court went on to confirm that even if the Board of Appeal had been in error in finding that the relevant publics overlapped, or that goods were marketed in the same distribution channels, this did not undermine its finding concerning the possibility of the public making a connection and creating the required “link”. Accordingly, the General Court refused the appeal on both grounds.
This article first appeared on WTR Daily, Part of the World Trademark Review in June 2020. For further information please go to www.worldtrademarkreview.com
