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| Seven felines for all mankind? Lovely artwork from Carol Cooper at the Blue Cat Studio |
Students of intellectual property law and practice have been heard to complain on occasion that the law is complex, that the statutes, treaties, regulations and directives are lengthy and that the quantity of case law is vast beyond belief and almost impossible to remember. That is why, when a case has an easy-to-remember name, it lodges in the memory, becomes more difficult to forget and will be more frequently cited in court. For example the CJEU's ruling in
BABY-DRY was criticised by many, but few cases have proved easier to recall. The case noted below, involving SEVEN FOR ALL MANKIND, is memorable too because it is easy to distinguish from other CJEU decisions -- but is it confusingly similar to another trade mark? For the answer to that question we turn to
Case C‑655/11 P, Seven for all mankind LLC v Office for Harmonisation in the Internal Market, Seven SpASAM applied to register the word sign SEVEN FOR ALL MANKIND as a Community trade mark for ‘jewellery, namely, jewellery made of precious metals and stones, bracelets, earrings, rings, necklaces, cufflinks, tie tacks, tie fasteners, pins, watches, watchbands, belt buckles of precious metals’ (Class 14) and ‘bags, hand bags, travel bags, travelling sets (leather goods), suitcases, rucksacks, valises, beach bags, trunks, document cases, pouches, wallets, card cases, portfolios, purses not of precious metal, cases for keys (leather goods), vanity cases, umbrella covers’.
In March 2006, Seven opposed, citing three earlier Community and figurative marks (all illustrated here) depicting the word "seven" and registered between them for a range of goods in Classes 3, 9, 12, 14, 15, 16, 18, 22, 25 and 28 for a wide range of goods which included rucksacks. Opposing SAM's application in respect of all goods for which registration was sought, Seven alleged a likelihood of confusion as well as taking unfair advantage of its reputat under Article 8(5) of Regulation 207/2009.
The Opposition Division the opposition as regards ‘rucksacks’. In its view, Seven's earlier trade marks had acquired an average distinctive character on the Italian market in relation to those goods, but rejected the opposition in respect of all the other goods. Seven then appealed unsuccessfully to the Second Board of Appeal (BoA), which felt that SAM's and Seven's marks displayed significant differences and that they were not similar overall. In any event the number ‘seven’, written in letters, possessed a very weak inherent distinctive character and the public was not accustomed to perceiving numbers as an exclusive sign of an undertaking. This being so, the BoA did not consider whether the distinctive character or reputation of the earlier marks had been proven; nor did it consider the opposition based on Article 8(5).
Seven then appealed to the General Court, this time with more success. In its view, the presence of the common word element ‘seven’ was sufficient to support a finding that there was some phonetic similarity between the signs at issue. The addition of the expression ‘for all mankind’ could easily be perceived by the English-speaking section of the relevant public as indicating the public for whom the trade mark was intended, this being the general public. In that context, the expression ‘for all mankind’ must be regarded as not very distinctive for the goods concerned and the conceptual scope of the mark for which registration was sought would therefore be mainly determined by the word ‘seven’, understood as being the main word to which the words ‘for all mankind’ applied. There was thus some conceptual similarity between the marks. In any event, while the expression ‘for all mankind’ evoked an alleged ‘philosophical concept’, it did not give SAM's mark a conceptual content that was so different from that of the earlier trade marks that it excluded any conceptual link between the respective marks. Since there was a certain overall similarity between the marks, the BoA made an error of assessment in not recognising that there was a certain degree of similarity between the signs at issue, since that fact influenced its examination of the likelihood of confusion. The General Court thus upheld both grounds of Seven's appeal.
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| Were the Magnificent Seven modelled on the Second Chamber of the CJEU? |
This morning the Second Chamber of the CJEU, having heard the Advocate General, dispensed with his Opinion and dismissed SAM's appeal with costs. The CJEU, in hearing appeals, against General Court decisions governing Community trade marks, is principally concerned with two things. The first is its duty to ascertain that the General Court's reasoning was based upon the principles of Community trade mark law that govern the assessment of trade marks in terms of their distinctive character, their similarity or otherwise and ground upon which registration is asserted or challenged. The second is to examine the procedural rules order to ascertain whether they have been correctly applied and whether, in the event that they have not been, whether this could be said to be of such a nature to affect the outcome of a decision that is the subject of the appeal. Whether the members of the Court of Justice seriously and personally believe that the words 'for all mankind', when following 'Seven' and displayed on or in relation to any of the goods for which registration was sought, were placed there in order to indicate the class of the public for which those goods were intended, is not recorded. Merpel thinks that such a proposition is laughably absurd, but she's only an ordinary consumer and not a member of the European judiciary.
The IPKat notes that the Second Chamber of the CJEU was composed of five judges, one Advocate General and a Registrar, giving a total of seven. He hopes that they are for all mankind ...
