Advocate General calls for reassessment of the likelihood of confusion of the Burlington mark. In the trademark dispute over the famous trademark Burlington, the ECJ’s Advocate General has strengthened the plaintiff Tulliallan, owner of the famous luxury passage Burlington Arcade in London, against the trademark registrations of several EU trademarks Burlington of the German Burlington Fashion GmbH, known for its Burlington socks with tartan pattern.
Plaintiff Tulliallan Burlington Ltd, owner of Burlington Arcade in London, objects to the application filed by the German Burlington Fashion GmbH (“BF”) for three separate EU figurative marks containing the word “Burlington” and the EU word mark “BURLINGTON”.
The case is also complicated by the fact that “Burlington” has been a well-known term for many decades both in Germany and in the UK. Moreover the term Burlington has been licensed from the USA for decades – we reported. In Germany, Scottish patterned socks have been produced under this brand name since the 70s, in the last few years by the company FALKE KGaA. In the UK, the famous luxury passage Burlington Arcade in the centre of London is a byword for the luxury products traded there.
Burlington affected brands in different Nice classes
The trade marks concerned are also registered for different Nice classes and product groups: German Burlington Fashion GmbH applied in 2008 and 2009 for registration of both the EU word mark Burlington and word and figurative marks containing the word element Burlington in Nice classes 3, 14, 18 and 24. The older EU word and figurative mark Burlington Arcade of Tulliallan Burlington Ltd is registered for Nice classes 35, 36 and 41.
However, Tulliallan sees its own famous name as a particularly distinctive term beyond the Nice classes claimed and also claimed the unfair exploitation of its very well-known own trade mark as synonym for luxury products. It also invoked Article 8(4) of Regulation No 207/2009 (Rights to an unregistered trade mark used in the course of trade within the EU).
EuG rejected contradiction of luxury passage Burlington
In 2013, the Opposition Division upheld the opposition, but by decision of 11 January 2016 (‘the contested decision’), the EUIPO Board of Appeal annulled it. The European Court (CJEU, Court of First Instance (CFI)) also rejected Tulliallan’s appeal in December 2017 ( Burlington – who thinks of London? ).
The CJEU had ruled that the absence of a precise indication of the goods which may be sold in the various shops which include a shopping arcade such as the Burlington Arcade excludes any link between those shops and the goods covered by the mark applied for. Moreover, the applicant has not proved that the use without due cause of the mark applied for takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier marks.
On this point, the Advocate General of the European Court of Justice, in his yesterday’s Opinion (EU:C:2019:538), agreed with the judgments of the European Court (CJEU) of 6 December 2017. There is little reason to believe, for example, that a brand-conscious London consumer of quality goods would be discouraged from visiting the Tulliallan passage simply because he accidentally comes across fashion items or other goods bearing the name ‘Burlington’ in other retail outlets, the Advocate General explained.
General Counsel calls for reassessment of the risk of confusion
However, unlike the CJEU, the Advocate General assessed Tulliallan’s third plea in law. In this plea Tulliallan argued that the CJEU had infringed Article 8(1)(b) of Regulation No 207/2009 on the likelihood of confusion. In particular, Tulliallan crizised that the CJEU had referred to the ruling of July 7, 2005 ( Praktiker Bau- und Heimwerkermärkte (C 418/02, EU:C:2005:425)), although its own earlier trademarks had already been registered in 2003. From this judgement, the CJEU concluded that the term “retail services” also includes sales services of shopping arcades. That question is relevant in so far as Tulliallan claimed a connection between the services and the goods in question , since consumers of the goods and services in Classes 35 and 36 include final consumers of the goods sold in shops. The CJEU had denied such a connection.
The Advocate General agreed with Tulliallan’s claim that the Court should have carried out an analysis of the similarity between the marks in question without taking account of the ‘Praktiker’ judgment, which was delivered only after the trade mark application had been filed. The Advocate General therefore recommends that the third plea in law relating to the British trade mark No 2314342, the British trade mark No 2314343 and the British trade mark No 2330341 should be referred back to the CJEU . The CJEU must, in principle, re-examine whether there is a likelihood of confusion between the three earlier United Kingdom marks in question and the marks applied for by BF.
If the European Court of Justice (ECJ) follows the Advocate General in his decision, this case will have to be re-analysed by the CJEU. Although the CJEU had confirmed Tullianllan’s appreciation of the earlier marks in the Nice classes 36, 41 and also for the services in class 35 , it concluded – with reference to the “Praktiker” judgment – that “retail trade services” also include sales services of shopping arcades. In that regard, Tulliallan could argue that the use of the marks applied for could have taken advantage of or adversely affected the distinctive character or the reputation of its earlier marks within the meaning of Article 8(5) of Regulation No 207/2009, the Advocate General stated in his Opinion. Nevertheless, the Advocate General stated that it was necessary for the proprietor of the earlier mark to prove that injury was foreseeable. And this was precisely what the CJEU did not consider to be proven in its judgments of 6 December 2017. So it remains an open end in this case.
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Opinion of the Advocate General EU:C:2019:538
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