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‘Tour De France’ and ‘Tour De X’… Confusing? The General Court of the EU thinks otherwise.
the Plaintiff sought the annulment of a decision by the board of appeal of the EUIPO concerning the registration of an EU trademark.
Facts of the Case
On the 11 May 2017, FitX filed an application with the EUIPO for the registration of an EU Trademark for a figurative sign including the following text: “TOUR DE X” and claimed the colours black and orange. The mark applied for designated goods and services in classes relating to inter alia, clothing gear, games toys, training apparatus and sporting education services.
On 11 August 2017, the Plaintiff lodged a notice of opposition to the registration of the above-mentioned mark on the basis of various earlier rights including the international trademark designating Germany for the figurative mark “TOUR DE FRANCE”, the French word mark “TOUR DE FRANCE” and the EU word mark and figurative mark “LE TOUR DE FRANCE”
In its arguments the Plaintiff referred to Articles 8(1)(b) and 8(5) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trademark (the “Regulation”). Article 8(1)(b) provided that a trade mark applied for shall not be registered because of (i) its identity with, or similarity to, the earlier trade mark and (ii) the identity or similarity of the goods or services covered by the trademarks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trademark.
Article 8(5) of the Regulation further provides that upon opposition by the proprietor of an earlier trademark, the trademark applied for shall not be registered where it is identical with, or similar to, the earlier trademark, where:
Author: Saman Bugeja
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- in the case of an earlier Community trademark, the trademark has a reputation in the Community and,
- in the case of an earlier national trademark, the trademark has a reputation in the Member State concerned;
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- alleging infringement of Article 8(1)(b) in relation to the likelihood of confusion between the marks; and
- alleging infringement of Article 8(5) in relation to the use of the mark as not being likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier rights.
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- the earlier trademark which is claimed to have a reputation must be registered;
- that mark and the mark applied for must be identical or similar;
- the earlier trademark must have a reputation in the European Union, in the case of an earlier EU trademark, or in the Member State concerned, in the case of an earlier national trademark; and
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- the use without due cause of the mark applied for must lead to the risk that an unfair advantage might be taken of the distinctive character or the repute of the earlier trademark or that it might be detrimental to the distinctive character or the repute of the earlier trademark.
Author: Saman Bugeja