MORE ON TDK
Following on from this morning's post on this case, some comments on the dilution aspects. Of particular interest is the court’s approach to the type of harm that will satisfy Art.8(5). The CFI said:
"the Court finds that the Board of Appeal was entitled to take the view, based on the sponsorship activities of the intervener, particularly in the sporting field, that were the mark applied for to be used by the applicant on sports clothing – a possibility which cannot be ruled out – such use would lead to the perception that that clothing was manufactured by, or under licence from, the intervener. That in itself is sufficient to constitute prima facie evidence of a future risk, which is not hypothetical, of the taking of unfair advantage by the applicant of the reputation of the earlier marks, a reputation which is the result of the activities, efforts and investments undertaken by the intervener for more than 20 years".
The IPKat finds this analysis odd. Though it’s couched in terms of unfair advantage, what the court is really saying is that TDK’s sponsorship activities meant that the public would be confused by later use of the types of goods which were produced as part of the sponsorship. OHIM has always shied away from finding confusion under Art.8(5), arguing instead that the Art.8(5) harms are different in nature from confusion, which is dealt with under Art.8(1)(b). The IPKat can see the merit in principle of filling a lacuna present in both the directive and the regulation (there’s no provision preventing confusion where the goods are dissimilar) but thinks that there’s little basis for doing so on the wording of the legislative instruments.
"the Court finds that the Board of Appeal was entitled to take the view, based on the sponsorship activities of the intervener, particularly in the sporting field, that were the mark applied for to be used by the applicant on sports clothing – a possibility which cannot be ruled out – such use would lead to the perception that that clothing was manufactured by, or under licence from, the intervener. That in itself is sufficient to constitute prima facie evidence of a future risk, which is not hypothetical, of the taking of unfair advantage by the applicant of the reputation of the earlier marks, a reputation which is the result of the activities, efforts and investments undertaken by the intervener for more than 20 years".
The IPKat finds this analysis odd. Though it’s couched in terms of unfair advantage, what the court is really saying is that TDK’s sponsorship activities meant that the public would be confused by later use of the types of goods which were produced as part of the sponsorship. OHIM has always shied away from finding confusion under Art.8(5), arguing instead that the Art.8(5) harms are different in nature from confusion, which is dealt with under Art.8(1)(b). The IPKat can see the merit in principle of filling a lacuna present in both the directive and the regulation (there’s no provision preventing confusion where the goods are dissimilar) but thinks that there’s little basis for doing so on the wording of the legislative instruments.