El Corte Inglés gets a bashing from a boomerang

On Tuesday the Court of First Instance of the European Communities (CFI) ruled in Case T‑420/03, El Corte Inglés, SA, v Office for Harmonisation in the Internal Market, José Matías Abril Sánchez and Pedro Ricote Saugar, one of those cases that makes Community trade mark law seem a lot more complex and a lot less attractive to applicants than it can be.

Sánchez and Saugar applied to register the Boomerang TV figurative mark (above) for, among other things. "cinema and recording studios, rent of videos, concourse (scattering), installation of television and radiophones, production of films" in Class 41. One of the IPKat's favourite stores, the Spanish chain of El Corte Inglés, opposed, as proprietor of a number of earlier Spanish, UK, Community and allegedly well-known Paris Convention figurative Boomerang marks - two of which are shown here -- which included the word 'boomerang' for, among other things, telecommunications services in Class 38, education and entertainment services in Class 41, installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes’ in Class 11, hand tools and instruments; cutlery, forks and spoons; side arms; safety razors in Class 8, as well as various items of clothing.

According to El Corte Inglés there existed a likelihood of confusion under Art.8(1)(b) of Council Regulation 40/94. Sadly for them, neither the Opposition Division nor the Board of Appeal agreed, concluding that there was no identity or similarity between the services for which registration of Boomerang TV was sought and the various goods and services for which El Corte Inglés held registrations of its own Boomerang marks. On what looks like a final fling, El Corte Inglés took their opposition from Alicante to Luxembourg, hoping perhaps that at a greater distance the likelihood of confusion might have grown. Alas, it did not. The CFI considered that the fact that some of the services for which El Corte Inglés had registered its marks might be advertised on television did not mean that those marks might be linked with television productions.

Apart from the slight problem of dissimilarity of services, El Corte Inglés had another hurdle to surmount, of a more procedural nature. This proved impossible. The CFI considered that the Board of Appeal did not dismiss the action brought before it by El Corte Inglés solely on the ground that the retail chain had submitted facts and evidence out of time; the Board had exercised its discretion correctly as to whether to consider the late-submitted evidence and that was an end to the matter.


The IPKat wonders whether the whole opposition exercise was really worth the bother; couldn't El Corte Inglés have done something more constructive with its ample financial resources, he wonders. Merpel adds, that second mark of El Corte Inglés really puzzles me. It says "boomerang" but looks more like a koala ...



My Boomerang Won't Come Back (best listened to with the speakers turned off) here
Koala recipe here