Weakness warning
Victoria Leach cautions against being economical with EU evidence post-Brexit.
Now that the UK is no longer part of the EU, UK evidence of repute and use is no longer directly relevant in establishing repute or enhanced distinctive character within the EU. This case emphasises the challenges faced by brand owners with a UK-based reputation as a result.
Background
The Applicant, Editorial Ecoprensa S.A., filed EU trade mark (EUTM) application No. 18084541 for a figurative mark.
An opposition was filed by The Economist Newspaper Ltd based on Article 8(1)(b) and 8(5) EUTMR. The opposition was decided based on the Opponent’s EUTM registration No. 192096 for a figurative mark.
First, the Opposition Division (OD) assessed the evidence filed by the Opponent in the proceedings to consider: (i) whether the earlier mark had been put to genuine use; and (ii) whether it had acquired a reputation/enhanced distinctiveness.
UK evidence of use assisted the Opponent in establishing genuine use of the mark within the EU, as the relevant period for establishing genuine use coincided with the period prior to the end of the transition period when the UK withdrew from the EU.
However, when it came to establishing reputation and enhanced distinctive character, UK evidence was not sufficient to establish the position in the EU, as the UK was not part of the EU at the time the decision was taken by the Office.
Late-filed evidence
The Opponent substantiated its reputation via evidence filed on 18th May 2020.
Following the Applicant’s request for proof of use, the opponent filed additional evidence on 3rd November 2020. After the expiry of the time limit, the Opponent then filed further evidence on 8th July 2021.
The Office weighed up using its discretionary power to take into account the evidence filed after the November deadline.
In doing so, it considered the criteria laid out in the Fishbone decisions (T-415/09 and C-621/11 P). In particular, the Office found that relevant evidence was filed within the time limit initially set and therefore the later evidence can be considered supplementary.
The Office also found it relevant that the Applicant disputed the initial evidence submitted by the Opponent, which justified additional evidence in reply.
Further, the Office found that the additional evidence merely strengthened and clarified the evidence submitted initially, as opposed to introducing new elements of evidence.
On this basis, the Office used its discretion to take into account the extra evidence submitted in July 2021.
Assessment of genuine use
Next, the Office considered whether the Opponent’s evidence met the criteria for genuine use while assessing the place, time, extent and nature of use. It found that the evidence did establish genuine use but in relation to the following part of the goods and services only:
- Class 9: Audio and video recordings.
- Class 16: Books, magazines and printed publications.
- Class 41: Organisation of conferences and seminars.
Opponent’s reputation
The Office then considered whether the evidence filed by the Opponent could establish that it enjoyed either acquired distinctive character in the earlier EUTM or a reputation in the EU.
Because the UK was no longer a part of the EU at the time of taking the decision, any evidence filed relating to this territory could not prove enhanced distinctiveness or reputation in the EU unless the findings could be extrapolated to the territory of the EU.
This is different to the assessment of genuine use, where UK evidence could establish use in the EU provided it related to the period prior to the end of the Brexit transition period on 31st December 2020.
The Office found the extent of use by the Opponent was insufficient to establish reputation or enhanced distinctiveness in its mark in the EU, since most of the evidence submitted related to recognition of the earlier mark in the UK or worldwide.
Likelihood of confusion
The goods and services in the application were considered identical or similar to varying degrees of similarity and partly dissimilar to those in the Opponent’s earlier EUTM.
Nevertheless, upon comparison of the marks, they were held to be visually and aurally similar to a low degree in view of the different figurative elements and aspects, as well as the different beginnings, endings and lengths.
In this regard, the Office considered that the meaning of “Economist” in English and “Economista” in Spanish would be understood within the EU as meaning something related to the economy.
In particular, the Office found that in almost all EU languages the word for “economics” derives from the same root.
As such, the respective verbal elements “Economist” and “Economista” possess a reduced degree of distinctive character. On this basis, the marks were considered conceptually similar to a low degree.
Given the meaning of the word “Economist”, a likelihood of confusion analysis was considered, bearing in mind the lower than average degree of distinctiveness of the earlier mark since the Opponent could not establish enhanced distinctive character in the EU.
In this context, it was found the average consumer would pay less attention to the coinciding string of letters “Economis*” and would focus on other elements in the signs, such as the distinctive element “ST” in the Applicant’s mark.
Accordingly, no likelihood of confusion was established and this ground of opposition was rejected. Since the Opponent had not established reputation in the EU, the opposition on the Article 8(5) ground was rejected.
Difficult case
This was a difficult case for the Opponent. Without evidence of repute or enhanced distinctive character, the inherent weak nature of the verbal element “The Economist” weighed heavily against its case.
Had the Opponent had been able to establish enhanced distinctive character of its mark within the EU, this may have been sufficient to establish a likelihood of confusion.
Key points
- UK evidence of repute and use is no longer directly relevant in establishing repute or enhanced distinctive character within the EU
- This may present an additional challenge for brand owners whose repute and use of an EU trade mark is concentrated in the UK.
