Shakespeare not for snobs; ROYAL SHAKESPEARE not for Austrians, rules Court

"Friends, Romans, Coumtrymen,
lend me your ears ..."

After surviving her study of Hamlet at high school, this Kat could not help but share with you this cartoon. Since her time in England, she has made it to Stratford to see Shakespeare’s birthplace and has attended several Shakespeare productions (including one at the Mini Factory at Oxford, which made for interesting staging). She has not seen the 2011 film Anonymous and is not sure that she wants to. However, she was interested to read the decision last week of the General Court -- the lower judicial tribunal of the Court of Justice of the European Union --  in the invalidity proceedings brought by the Royal Shakespeare Company (RSC) against Austrian company Jackson International Trading Co Kurt D Brühl GmbH & Co KG ('Jackson') in relation to the latter’s Community trade mark (CTM) ROYAL SHAKESPEARE: the case is T-60/10 Jackson International Trading Co Kurt D Brühl GmbH & Co KG v OHIM and the Royal Shakespeare Company (6 July 2012).

In August 2000 Jackson filed a CTM application for the trade mark ROYAL SHAKESPEARE in Classes 32, 33 and 42 (No 001787670). The trade mark was registered on 24 October 2003. In October 2006, the RSC applied for a declaration of invalidity on a number of grounds, including:

• the ROYAL SHAKESPEARE mark was of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or services;

• its use without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of its earlier trade marks, which were well¬known in the United Kingdom;

• British national law would allow it to prohibit the use of the contested trade mark under the law of passing off, in particular on the basis of its non¬registered trade mark ROYAL SHAKESPEARE COMPANY used in the course of trade in the United Kingdom.

The earlier trade marks relied on in support of the application for a declaration of invalidity were:

• the CTM RSC-ROYAL SHAKESPEARE COMPANY (No 908 822), registered with effect from 17 August 1998 in Class 41

• the British stylised mark (No 2 055 924), registered with effect from 26 September 1997 in Class 41

• the non-registered word mark ROYAL SHAKESPEARE COMPANY, used in the course of trade in the United Kingdom in connection with a wide variety of goods and services including food, alcoholic drinks, non-alcoholic drinks and beers, confectionery, conserves, pickles, providing of food and drink, restaurant services, bar services, and café services.

In February 2009 the Cancellation Division rejected the RSC’s application for a declaration of invalidity. The RSC appealed and, in November 2009, the Board of Appeal annulled the Cancellation Division’s decision, declaring Jackson's CTM invalid. Said the Boar, the RSC's own CTM, RSC¬ROYAL SHAKESPEARE COMPANY, had an ‘exceptional’ reputation in the United Kingdom, which constituted a crucial part of the European Union in the mind of the public at large.

Now it was Jackson's turn to appeal. In essence, Jackson disputed the finding that its ROYAL SHAKESPEARE registration would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier RSC¬ROYAL SHAKESPEARE COMPANY mark. It made three submissions. First, RSC¬ROYAL SHAKESPEARE COMPANY had a reputation only for ‘theatre productions’, not for other goods and services, and its public was not the public at large. Secondly the compared signs, when assessed globally, were not sufficiently similar to create any potential likelihood of association of those signs and the undertakings which own them. Thirdly there was no ‘reasonable circumstance or evidence’ which could show or suggest that Jackson’s use of the trade mark ROYAL SHAKESPEARE might take an unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.

Last week, the General Court dismissed Jackson’s arguments -- and its appeal -- and upheld the Board of Appeal's decision to declare the ROYAL SHAKESPEARE trade mark invalid.

Under Article 8(5) of the Community Trade Mark Regulation, a number of conditions must be met for an earlier CTM to invalidate a later one. First, the earlier mark which is claimed to have a reputation must be registered. Secondly, that trade mark and the trade mark in respect of which registration is sought must be identical or similar. Thirdly, the earlier trade mark must have a reputation in the European Union, in the case of an earlier CTM, or in the Member State concerned, in the case of an earlier national trade mark. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. These conditions are cumulative, so the failure to satisfy any one of them is sufficient to defeat the claim for invalidity of the later CTM.

Working through each of these issues in turn:

First, the Court found that the two marks were similar and concluded that there was a likelihood of association. As Jackson’s ROYAL SHAKESPEARE was exclusively made up of the central and distinctive element of the earlier RSC-ROYAL SHAKESPEARE COMPANY, the two marks were visually, phonetically and conceptually similar. Therefore the average consumer will establish a link between them.

Secondly, the Court found that the reputation of the earlier mark extended to the public at large. In particular, its reputation was for theatre productions which are, contrary to the position argued by Jackson, services aimed at the public at large, and not merely at a limited number of consumers or an elite. The Court added that access to theatres was available to all and, in theory, thanks to affordable prices, to the average consumer. The price of a ticket to see one of the RSC’s theatre productions is not necessarily any higher than that of a ticket for the cinema, a concert, a sporting event or any other performance or cultural or sporting leisure activity. Accordingly, the Board of Appeal was correct to find that the reputation of RSC’s trade mark extended to the public at large.

Thirdly, the Court emphasised that Jackson did not contest the Board of Appeal’s conclusion that RSC-ROYAL SHAKESPEARE COMPANY had an ‘exceptional’ reputation in the United Kingdom for ‘theatre productions’. The Court added that the Board of Appeal was right to find that the reputation of the earlier trade mark in the United Kingdom was sufficient to establish a reputation at European Union level, since the United Kingdom constitutes a substantial part of the European Union.

Fourthly, by using ROYAL SHAKESPEARE, Jackson would benefit from the power of attraction, the reputation and the prestige of the earlier trade mark for its own goods and for its services. In the beverages market, those goods would attract the consumer’s attention thanks to the association with the RSC and its CTM, which would give Jackson a commercial advantage over its competitors’ goods. That economic advantage would consist of exploiting the effort expended by the RSC in order to establish the reputation and the image of its earlier trade mark, without paying any compensation in exchange. That in turn would equate to an unfair advantage taken by Jackson of the repute of the earlier trade mark. It followed that the Board of Appeal was right to consider that there was a strong likelihood that the use of ROYAL SHAKESPEARE would take unfair advantage of the reputation of RSC¬ROYAL SHAKESPEARE COMPANY.

A rare occasion on which the IPKat
asserts himself against Merpel

Fifthly, the Court found that Board of Appeal was right to hold that Jackson had not established due cause for the use of its ROYAL SHAKESPEARE mark. This was because Jackson had not put forward any due cause, even though it was for it to establish that there was one. Before the Court, Jackson claimed merely to have ‘demonstrated how and for which product the contested trade mark has been used in the past’ but, even assuming that that aspect was relevant, it provided no additional indication or explanation. In order to establish due cause, the Court emphasised that it was not use of ROYAL SHAKESPEARE which was required, but a reason justifying the use of that trade mark.

The IPKat thinks this is a good decision for the British during the build-up to the London Olympics, though he never knew that RSC-ROYAL SHAKESPEARE COMPANY was a trade mark.  Merpel hopes that this will be an opportunity for readers to show their erudition by digging up lots of apposite Shakespearean quotes to summarise this litigation.


The cat illustrations here, by giu-lia, are from the Thaeger blog. You can find more of them here. In the IPKat's opinion they are among the finest cat illustrations he has encountered in nine years' blogging. Merpel wants to know if they are available as posters. They should be.