Sonia, yet so far

It must have been posted quite late in the day on the Curia website, but Case C-131/06 Sonia Rykiel Création et Diffusion de Modeles v Office for Harmonisation in the Internal Market, Cuadrado SA, yesterday's offering from the Court of First Instance, certainly wasn't there during the morning when the IPKat likes to prowl his territory.

In short, Rykiel applied to register as a Community trade mark a figurative sign for, among other things, ‘Leather and imitations of leather and goods made of these materials, namely handbags, trunks, suitcases and travelling bags, purses, pocket wallets, chequebook holders, card holders, key ring cases, umbrellas, parasols, walking sticks and switches’ (Class 18) and ‘Clothing, including headscarves, underwear, socks, stockings, footwear (except orthopaedic footwear), headgear, for men, women and children’ (Class 25). The sign consisted of the word 'Sonia' in large text above the words 'Sonia Rykiel' in smaller text, on a dark background (right). Cuadrado, a Spanish company, opposed and cited two earlier Spanish registrations, for knitwear and articles of clothing other than headgear in Class 25, of one mark that consisted of the word 'Sonia' in stylised text (left) and another for the word mark SONIA. According to Cuadrado, on account of the identity/similarity of the goods and the similarity of the marks there was a likelihood of confusion of the relevant consumers.

The Opposition Division found that there was a likelihood of confusion between those marks in relation to goods in Class 25, but not Class 18. Rykiel appealed, objecting to the absence of any evidence of genuine use of Cuadrado's earlier marks over the previous five years. The Board of Appeal allowed the appeal and remitted the matter for further consideration in respect of the goods in Class 25.

Second time around, Cuadrado submitted evidence of genuine use. The Opposition Division concluded that genuine use had been established in relation to women's slips and petticoats covered by the registration of the earlier word mark, concluding that there was no likelihood of confusion between that mark and Rykiel's. Now it was Cuadrado's time to appeal to the Board of Appeal. The Board agreed that there had been genuine use of the earlier word mark, but allowed the appeal on the basis that there was indeed a likelihood of confusion.

Rykiel now appealed to the Court of First Instance and sought annulment of the Board's decision. In its grounds of appeal Rykiel maintained that the evidence submitted by Cuadrado to establish genuine use of the earlier word mark was neither relevant nor sufficient: only nine invoices out of all the documents submitted by Cuadrado were relevant, and they showed that only 85 units of women's slips and petticoats had been sold over a 13-month period.

Allowing the appeal, the Court of First Instance ruled as follows:

* To examine whether an earlier trade mark had been put to genuine use in a particular case, an overall assessment had to be carried out, taking account of all the relevant factors in that case.

* That assessment entailed a degree of interdependence between the factors to be taken into account: the fact that commercial volume achieved under the mark was not high might be offset by the fact that the use of the mark was extensive or very regular, and vice versa. In addition, the turnover and the volume of sales of the product under the earlier mark could not be assessed in absolute terms, but had to be looked at in relation to other factors, such as the volume of business, production or marketing capacity, or the degree of diversification of the undertaking using the trade mark and the characteristics of the products and services on the relevant market.

* Even minimal use could be sufficient to be deemed genuine, provided that it was viewed as warranted in the economic sector concerned in order to maintain or create a share in the market for the goods or services protected by the mark.

* In this case the goods were of everyday consumption and sold at very reasonable prices. There was nothing to indicate that the use of the earlier word mark had been extensive or very regular. In all the circumstances, the total volume of transactions over the relevant period appeared to be token and could not be held to be warranted in the economic sector concerned for the purpose of maintaining or creating a market share for the goods protected by that earlier mark.

The IPKat feels that this is a really tricky issue. The more criteria the court lists as being relevant to the issue of genuine use/non-use, the greater the risk that purely factual considerations will become ingrained in the fabric of the law itself. Merpel adds, the saddest thing here is that Rykiel first applied for CTM registration in 1998. It's now 2008 and the application has gone through two Opposition Division hearings, two Board of Appeal hearings and the Court of First Instance. There must be a better way ...