Alicante Abstracts

Family of Defensive Marks Falls Short

Defensive marks are a thing of the past in the United Kingdom, but registrations designed only for enforcement rather than for use remain alive and well in certain other countries. To what extent can opponents rely on defensive registrations in oppositions to CTMs, when proof of use is called for but cannot be supplied?

The Court of First Instance offered insight on this, as well as on the circumstances in which a so-called “family” of marks may confer extended protection, in its decision in Il Ponte Finanziaria SpA v OHIM (Case T-194/03).

 

The Opposition Proceedings

The case concerned an opposition by Il Ponte Finanziaria SpA to a CTM for BAINBRIDGE Logo for leather goods and clothing. Il Ponte based its attack on a number of Italian registrations for marks comprising or including the words BRIDGE and THE BRIDGE for identical goods.

Several of these were defensive registrations, meaning that they were registered in order to protect other trade marks of Il Ponte from encroachment. Italian law did not impose use requirements on such defensive registrations. Consequently, when the applicant required Il Ponte to prove use of those registrations, it could not, and OHIM disregarded them in the opposition.

Il Ponte had also relied on its ownership of a “family” of registrations in which the inherently distinctive words BRIDGE and THE BRIDGE formed an integral part. It argued that this “family” of marks conferred extended protection. OHIM also rejected this submission, on the grounds that Il Ponte had not proved use of the various marks in Italy such that the average Italian consumer could be presumed to have been aware of the family of marks.

Finding that the marks were dissimilar visually and aurally, OHIM and the Board of Appeal dismissed Il Ponte’s opposition.

On appeal to the CFI, however, Il Ponte argued that proof of use was not required in respect of defensive registrations because national law did not impose those requirements. It further submitted that the mere registration, rather than registration and use, of a family of marks was sufficient to confer extended protection, and that if this was taken into account it was clear that a likelihood of confusion existed.

 

Defending the Indefensible

The CFI examined the question of defensive marks with care. There was, it noted, no concept of defensive marks in the Community Trade Mark system. Hence, while Italian law did not require use for defensive registrations, there was no such exception to the use requirements for CTMs. Moreover, Articles 43 (2) and (3) CTMR, which provide for proof of use challenges in oppositions to CTMs, did not expressly provide for such an exception in respect of any earlier national right on which opposition to a CTM might be based.

The CFI took into account the ninth recital to the CTMR to the effect that “there is no justification for protecting Community trade marks or, as against them, any trade mark which has been registered before them, except where the trade marks are actually used.” It concluded that all types of earlier national registrations were subject to proof of use challenges in CTM oppositions.

Although unused earlier marks could be relied on in oppositions to CTMs where proper reasons for non-use were shown, the mere fact that national law did not require use of a defensive registration did not constitute proper reasons for non-use within the meaning of Articles 43 (2) and (3). Proper reasons denoted obstacles to or circumstances preventing use; mere non-use of defensive registrations because national law did not require use did not rise to the same level.

Although defensive registrations were not specifically addressed in the CTMR, therefore, the Court reasoned that taking account of them in oppositions to CTMs was not compatible with the CTMR.

 

Disowning the Family, Too

The CFI was equally disenchanted with Il Ponte’s approach to families of marks.

It agreed that where an opposition is based on a number of earlier marks which all include a common distinctive characteristic, the fact that the marks form a “family” is a relevant factor in the assessment of likelihood of confusion. It could tilt the scales in an opponent’s favour where the average consumer recognizes that a later mark is not the same as the earlier marks, but nonetheless associates the later mark with the family of earlier marks and believes there to be a shared trade origin.

Nonetheless, for this to occur, it was imperative that the earlier family of marks actually be in use. If they were not present in the marketplace, the average consumer was unlikely to make the association claimed. Moreover, the later mark needed to be capable of being associated with the family of marks, which might not occur if the only shared element was in a different position to its position in the family of marks, or had a different semantic content.

In this case, Il Ponte had not proved use of any of its earlier marks except for THE BRIDGE and THE BRIDGE WAYFARER. Most of the earlier marks had already been properly disregarded, leaving insufficient basis on which to claim a family of marks.

The CFI did not comment on whether there was sufficient similarity between THE BRIDGE and the BAINBRIDGE Logo to give rise to an association under the “family of marks” principle. If it had, however, it could have found that the common element BRIDGE was in a different position and had a different overall semantic content in the applicant’s mark. It seems likely that Il Ponte would have failed for this reason, as well.

 

Comment

The CFI’s ruling on defensive marks is a useful waymarker on what is, these days, an infrequently travelled byway of trade mark law. In the U.K., defensive marks were abolished with the introduction of the Trade Marks Act 1994, and existing defensive registrations became subject to use requirements. Where they do still exist in other countries, however, there has always been a question as to whether their unusual national status would confer any advantages over ordinary national registrations in OHIM oppositions, since, under national law, no use requirements applied to them.

The CFI’s clear-headed reasoning confirms that there are no exceptions for defensive marks—they are subject to the same proof of use requirements as other national marks where relied on in OHIM oppositions.

Although infringement of national marks is a matter of national law, the wording of the ninth recital to the CTMR also calls into question whether existing defensive marks can retain the same sting against the use, as well as registration, of later CTMs.

The wording of the judgment leaves a slight ambiguity as to whether defensive registrations should be disregarded only where proof of use is required but not shown, or whether they should not be taken into account at all in oppositions to CTMs because they are incompatible with the CTM system. In the rare cases where defensive marks are relied on in CTM oppositions, this ambiguity may be exploited by both sides. If the case is appealed, greater clarity on this point would be welcomed.

Meanwhile, brand owners who availed themselves of defensive mark registrations in the past would be well advised to review their portfolio: marks of real interest should be protected as proper trade marks, so that the conditions governing their protection and enforceability against CTMs, and indeed against the use of CTMs, are unarguable.

As regards families of marks, the CFI’s approach is a salutary reminder of the importance of use: without it, there is no justification for conferring extended protection in opposition or infringement proceedings, because there is no basis for asserting that the average consumer knows the family of marks and will assume the later mark to be a relation.