Burlington Arcade vs. Burlington: Luxury passageway wins

Plaintiff Tulliallan, owner of the famous luxury arcade Burlington Arcade in London, won yesterday before the ECJ against Burlington Fashion GmbH, known for its Burlington socks. The CFI had referred to the Praktiker judgement of 2005, but the plaintiff’s trademarks had been registered previously.

The judgement of the ECJ (C:2020:151) on the trademark dispute about the Burlington brand marks the end of a longstanding dispute about the Burlington brand name. Plaintiff Tulliallan Burlington Ltd (UK), owner of the famous luxury arcade Burlington Arcade in London, had filed an action against the application for three separate EU figurative marks containing the word “Burlington” and the EU word mark “BURLINGTON” filed by the German Burlington Fashion GmbH (“BF”), invoking its own luxury arcade and the trademark Burlington Arcade, which has been protected since 2003.

The marks in question were registered for different Nice classes, the earlier word and figurative mark Burlington Arcade by Tulliallan for Nice classes 35, 36 and 41, while the marks in dispute, Burlington, were registered for Nice classes 3, 14, 18 and 24. However, the case-law has consistently held that a likelihood of confusion is also possible between marks in different Nice classes.

Moreover, both parties are companies that have been using the brand name Burlington for decades: In Germany, Scottish patterned socks have been produced under this brand name since the 1970s and up to the present day, while in the UK, on the other hand, the famous Burlington Arcade luxury arcade in the centre of London is a byword for the luxury products sold there.

The applicant Tulliallan nevertheless regarded its own earlier mark as a term with a particularly distinctive character and claimed, in addition to the likelihood of confusion, that its own reputation was being unfairly exploited (pursuant to Article 8(4) of EU Regulation No 207/2009).

Since 2013, this case has been heard before different instances with conflicting judgments, but in June 2019 the Advocate General strengthened the Burlington Arcade trademark in his opinion.

Brand dispute Burlington Arcade vs. Burlington since 2013

In particular, applicant Tulliallan claimed before the ECJ that in its judgments of 6 December 2017 the ECJ referred to a judgment of 2005, Praktiker Bau- und Heimwerkermärkte (C 418/02, EU:C:2005:425) – although its own earlier marks had all been registered before that judgment, namely in 2003.

This was relevant because the CFI concluded from the Praktiker judgment that the term “retail services” in Nice class 35 also included shopping arcades and shopping centres. However, since Tulliallan’s earlier marks do not contain any precise indication of the goods sold in the Burlington Arcade, this precludes any link between those shops and the goods covered by the contested mark of BF, the CFI had ruled. BF’s Burlington socks are purchased by average consumers, whereas the applicant’s goods were generally defined as ‘luxury goods’.

It is equally important that since the Praktiker judgement of 2005, the goods offered for sale must be precisely indicated in the case of retail services.

Praktiker judgment of 2005 does not apply to earlier marks

Yesterday, the highest European Court of Justice (ECJ) ruled on the trademark dispute Burlington and upheld the plaintiff Tulliallan. The ECJ should not have referred to the 2005 judgment because Tulliallan’s earlier marks were registered by Tulliallan before the date of the Praktiker judgment, the ECJ ruled.

The owner of such an earlier mark must be able to exercise his right to oppose a later trademark application without the opposition failing merely because of the lack of precise information on the goods, the court explained. Moreover, it is also possible, by means of a request for proof of genuine use of the earlier mark (within the meaning of Article 42(2) of Regulation No 207/2009), to identify the exact goods covered by the services for which the earlier mark has been used and to take into account only those goods when examining the opposition, the ECJ added.

The judgment of the ECJ in favour of the applicant Tulliallan Burlington is a complete defeat of the intervener Burlington Fashion. This trade mark dispute was carried out in several proceedings and through several instances. The decisions and rulings made there were annulled in their entirety by the ECJ’s judgment. In detail, all Burlington judgments of the CFI of 6 December 2017 and also the decision of the Board of Appeal of 11 January 2016 have been set aside.