Here at Ward Trade Marks we are happy to introduce our guest blog by Dr. Stephen James. Stephen is a past president of CITMA, and a leading practitioner with almost 40 years’ experience in UK and EU trade mark law.
Under European (and the UK) trade mark law, trade mark revocation may occur if there has been five years’ of non-use. One way of resisting such a trade mark revocation action allows the proprietor of the registration to rely on the use of another trade mark that differs (from the registered mark) only “in elements which do not alter the distinctive character” of the registered mark. This particular aspect of European trade mark law was recently considered by the (European) General Court in Cafés Pont v Giordano Vini (Case T-309/16).
Cafés Pont is a Spanish retailer of non-alcoholic beverages, including their Arts Cafe brand of coffee products. In order to protect their trade mark in December 2006, Cafés Pont filed a European trade mark (EUTM) application (No. 5622345) for the stylised form of Arts Café shown below, covering goods in Class 30 including coffee. This EUTM application was granted in January 2008.
Giordano Vini is an Italian wine producer who, in recent years, has broadened their commercial interest to the production of coffee. In particular, this Italian company now sells a high-end coffee making machine under the trade mark Italian Art Café Espresso Club, see below.
Indeed, an EUTM application (No. 6682306) filed by Giordano Vini in February 2008 for the Italian Art Café Logo (and claiming coffee in class 30) was successfully opposed (Opposition No. B1414756) by Cafés Pont on the basis of the earlier Arts Café (Stylised) mark (EUTM 5622345).
Not the end of the story
Giordano Vini obviously took the view that revenge is a dish best served cold because, after losing the above trade mark opposition in January 2011, they waited over three years before striking back against the Spanish opponent. When they did strike, however, they did it effectively.
On 1 July 2014, Giordano Vini applied for a trade mark revocation to Cafés Pont’s EUTM registration (No. 5622345) for Arts Café (Stylised) under Article 51(1)(a) (now Article 58(1)(a)) of the EUTM Regulation. The ground given was that Cafés Pont had not made any genuine use of their registered trade mark (Arts Café (Stylised)) in relation to the Class 30 goods protected in the EU in the five years prior to the revocation action (that is, during the period from 1 July 2009 to 1 July 2014).
Given that the Spanish coffee retailer actively sells an Arts Café brand of coffee, at least in Spain, it not unexpectedly contested Giordano Vini’s revocation action. However, Cafés Pont was unable to provide any evidence of use of their registered Art’s Café (Stylised) mark. So, instead, they produced materials that showed the use of two (Pont A Art’s Café) coffee labels, one of which is shown below, in respect of the sale of coffee in Spain.
They then argued that the use of these two (Pont A Art’s Café) labels in Spain constituted genuine use of their registered (Art’s Café (Stylised)) mark in the EU since the two label marks differed only “in elements which do not alter the distinctive character” of the registered mark, as required under Article 51(1)(a) (now Article 18(1)(a)) of the EUTM Regulation.
Did this constitute use of the trade mark?
The Cancellation Division of the EUIPO disagreed with Cafés Pont’s argument and revoked their Arts Café (Stylised) EUTM Registration (No. 5622345). In the Tribunal’s view,
- the small relative size of the phrase Arts Café in the labels that had actually been used by Cafés Pont in Spain, and
- the absence of any stylisation of the phrase Arts Café in the used labels,
meant that the two label marks that were in use in Spain differed materially from the registered mark.
The differences were significant enough to lead to the conclusion that the use of the two (Pont A Art’s Café) labels did not count as genuine use of the registered (Arts Café (Stylised)) mark in the EU in relation to coffee. Essentially, the distinctive feature of the registered (Arts Café (Stylised)) mark was its stylisation. Since this was absent from the coffee labels that were in use in Spain, the use of these two labels could not save Cafés Pont’s registration.
Subsequently, Cafés Pont appealed this adverse decision to both the EUIPO Board of Appeal (R1110/2015-2) and the (European) General Court (T–309/16), but to no avail. Both superior tribunals agreed with the reasoning of the Cancellation Division and revoked Cafés Pont’s EUTM registration.
The importance of this case to the Spanish coffee retailer can be inferred from the fact that they have now appealed the General Court’s adverse decision to the full European Court of Justice (Case C–559/17P).
What’s to take away?
Whatever the final outcome of this further appeal, this case illustrates two fundamental aspects of good trade mark practice if you want to avoid trade mark revocation.
- Once a company or individual obtains a trade mark registration, it generally has five years to bring its trade mark into use in the relevant jurisdiction. After that, if you don’t use it, you may well lose it.
- As a company or individual almost inevitably makes changes to the trade marks it uses, it is important to ensure that the marks registered continue to match the marks that are actually in use. The only sure way to do this is to review your trade mark portfolio on a regular basis (say once a year) and to deal with any gaps that may have appeared in the portfolio’s protection. In that way, the situation of the type now faced by Cafés Pont should be avoided.
For the Spanish retailer, it may be too late to wake up and smell the coffee. To avoid the same fate: