The General Court was not entitled to reject an opposition brought under Article 8(5) of the Union Trade Mark Regulation on the ground that there was no evidence of a reduction in the 'attractiveness' of the earlier marks

Print this page 12-03-2020
IPPT20200304, CJEU, Burlington v Burlington Arcade

Trade Mark Law. The General Court erred in law by rejecting an opposition brought under Article 8(5) of the Union Trade Mark Regulation on the ground that there was no evidence of a reduction in the 'attractiveness' of the earlier marks: the article ensures protection for (i) detriment to the distinctive character of the earlier trade mark, (ii) detriment to the repute of that mark and (iii) unfair advantage taken of the distinctive character or the repute of that mark, with the ambiguous reference by the General Court to a possible reduction in the ‘attractiveness’ of the earlier trade marks cannot confirm beyond all doubt that it did in fact verified the existence of one of those three infringements. The General Court erred in law by determining that any  precise statement of the goods which may be sold in the various shops comprising a shopping arcade precluded any association between those shops and the goods of the mark applied for: in Praktiker (IPPT20050707), it was held that the applicant should be required to specify the goods or types of goods to which those services relate, the present case does not concern the protection of trade marks registered at the date of that judgement’s delivery like the trade marks in casu, it cannot be inferred from the judgement in Praktiker that ground of opposition ex article 8(1)(b) of the Union Trade Mark Regulation may be rejected from the outset, simply by invoking the absence of any precise statement of the goods to which the retail services covered by the earlier trade mark may relate.

 

IPPT20200304, CJEU, Burlington v Burlington Arcade

 

C-155/18 - ECLI:EU:C:2020:151