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Lookalike Trade Marks – Competition Is Fine But Unfair Competition Is Not

Dr Stephen James writes again for Ward Trade Marks. Stephen is a past president of CITMA, and a leading practitioner with almost 40 years’ experience in UK and EU trade mark law.

This time he reviews an EUIPO trade mark opposition case where an application for a figurative trade mark covering sunglasses was alleged to infringe the earlier registered rights of the well known Ray Ban stable. As we shall see, both parties needed their coolest shades for this roller-coaster brand battle.

Rey Beni v Ray Ban

An individual, Mr Xian Chen, applied to register the stylised mark (Rey Beni) shown below as an EU trade mark (EUTM application no. 12511317) for a very wide range of goods in classes 9, 14 and 18 including sunglasses and spectacle frames.

The EUTM application was opposed by the Italian company, Luxottica Group, based on their earlier rights in the well-known trade mark Ray-Ban. In particular, Luxottica relied on an earlier Spanish trade mark registration (no. 1986250) for the stylised, black and white (Ray-Ban) mark shown below covering, amongst other class 9 goods “optical apparatus and instruments”. They also relied on an earlier EUTM registration (no. 9271701) for the closely related stylised (Ray-Ban) mark in colour (red and white) that covered, amongst other goods and services, nearly all goods in classes 14 and 18.

Opposition grounds

The grounds of opposition were Art. 8 (1) (b) of the EUTM Regulation (similarity of marks and goods) and Art. 8 (5) (reputation of the earlier marks).

A sizeable market share

Before the Opposition Division, Luxottica filed evidence of their reputation in the Ray-Ban trade mark in Spain. This included sales figures, advertising expenditure and market share. In the latter case the opponent was able to establish that their Ray-Ban products have about a 25% share of the Spanish sunglasses market.

On the basis of the evidence provided, the Opposition Division accepted that Luxottica had established the necessary reputation in their trade mark Ray-Ban in Spain in respect of sunglasses and eyeglass frames. Bearing that in mind, the Opposition Division then proceeded to consider the opposition from the perspective of the relevant Spanish consumer.

Similarity of the marks?

Looking first at the conflicting marks, the Opposition Division found that they had a highly similar structure, typeface and stylisation which meant that they conveyed a very similar overall impression; in short the signs were similar.

What about the goods?

Turning to the two sets of goods they were found to be identical or similar in respect of most of the class 9 specification, including sunglasses and in respect of all the class 14 and 18 goods claimed. The Art. 8(1)(b) ground of opposition therefore succeeded in respect of all of the goods claimed by Mr Chen except for a very narrow range of class 9 goods, namely apparatus, instruments and cables for electricity; safety, security, protection and signalling devices; devices for treatment using electricity; magnets, magnetisers and demagnetisers; apparatus and instruments for controlling electricity; electric and electronic components; photovoltaics; electricity and mains apparatus; uninterruptible power supply apparatus; uninterruptible power supply apparatus (battery); regulated power supply apparatus; priezoelectric igniters; mains power units (electric-); electric power units (the “dissimilar class 9 goods”).

And reputation?

Turning to the Art. 8 (5), reputation-based, ground of opposition, the Italian opponent was less successful. The Opposition Division considering the position in respect of the “dissimilar class 9 goods”, found that the relevant Spanish public would probably not make a mental connection, that is establish a link, between the conflicting signs (even though they were similar) in relation to dissimilar goods.

A partial victory

Mr Chen’s EUTM application was therefore rejected by the Opposition Division in respect of the majority of the class 9 goods claimed (including sunglasses) and in relation to all of the class 14 and 18 goods covered. For the remaining dissimilar class 9 goods, the EUTM application was allowed to proceed.

This result did not fully satisfy Luxottica and they appealed against the allowance of the narrow class 9 specification of dissimilar goods. The appeal (R675/2015 – 5) was based on their reputation in the trade mark Ray-Ban (Art. 8 (5)).

Appeal to the Fifth Board of Appeal

The Fifth Board of Appeal first considered the similarity of the conflicting marks and came to a rather different conclusion to the Opposition Division. In the Board’s opinion, the trade marks were similar only to a very low degree. According to the Board, the difference between the marks would not go unnoticed by the relevant public. This was particularly the case since the differences concerned the initial elements (the letter “Be” in the case of the mark applied for and the letter “Ra” in the case of the opponent’s mark).

Given these adverse findings (to Luxottica) on the similarity of the marks (or lack thereof), it was perhaps not surprising that the Board decided that the relevant Spanish public which is assumed to be professional in various sectors, such as electricity and security, would not draw any link between the applicant’s mark and those of the opponent. In the Board’s opinion, the difference between the goods (sunglasses and spectacle frames) for which the opponent had a reputation and the dissimilar class 9 goods that had been accepted by the Opposition Division was too great for any such link to be made. For this reason, Luxottica’s appeal was rejected and Mr Chen’s application remained valid for his dissimilar class 9 goods.

Appeal to the General Court

Luxottica appealed again, this time to the European (General) Court (Case No. T-721/16). As often happens in the topsy-turvy world of EU trade marks, the General Court viewed the matter from yet another perspective.

The court considered the similarity between the two marks and found themselves more in agreement with the Opposition Division than with the Board of Appeal. In the Court’s view, the conflicting marks had a similar structure and composition and used similar, handwriting type stylisation. This, along with the similarity between the initial letters “B” and “R”, led their Court to conclude that there was an average visual similarity. It followed that, given the low degree of phonetic similarity and the absence of a conceptual comparison, the overall assessment by the Court was that the two marks were similar to a low or medium degree.

Who is the relevant public?

The General Court then considered the nature of the relevant Spanish public and concluded, given the dissimilar class 9 goods at issue, that it encompassed both professionals and the general public. This was at odds with the Board of Appeal who had considered the question merely from the standpoint of professional purchasers of the goods.

These rulings, on similarity and the relevant public, led the Court to conclude that a link would be made between the conflicting brands by those interested in the applicant’s dissimilar class 9 goods. This was a conclusion that even the Opposition Division, who had seen the two marks as “conveying a very similar overall impression”, had failed to reach.

The court therefore annulled the decision of the Board of Appeal and they thereby rejected Mr Chen’s EUTM application in its entirety. This is not the first trade mark dustup between the owner of the Ray-Ban trade mark and Mr Chen. In an earlier (2012) opposition (no. B 1851099); Zhengzan Chen v Luxottica Group) the Italian company successfully opposed an earlier Ray-Ban lookalike mark (EUTM application no. 9716598, shown here) in respect of class 39 services. In that earlier opposition, the Rey-Beni mark claimed was found to be highly similar overall to the trade mark Ray-Ban (stylised).

Ray Ban too cool for David Cameron?

It turns out that, in spite of this adverse trade mark decision, Rey Beni sunglasses were on sale in the EU for a period around 2013. Indeed, the former British Prime Minister David Cameron, was pictured wearing a pair of such (Rey Beni) sunglasses at the Cornbury music festival in the Cotswolds (known as Poshstock) in July 2013. I’m guessing but I doubt that this would have pleased Luxottica or any other top brand owner. Competition is fine but unfair competition is not. Quite rightly the applicant was found to be on the wrong side of the line in both of the above cases.

Dr Stephen James
Ward Trade Marks

Ward Trade Marks conducts trade mark opposition proceedings before the UKIPO and the EUIPO. If you need more information on opposing a trade mark application or defending an opposition please contact Rachael or Bill Ward: [email protected], or call us on 01284 774841

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