Image: Nina Ricci

It is a well-established principle that owners of EU trademarks “with reputation” can claim a broader scope of protection than owners of EU trademarks that are not deemed to have a similar status. However, questions abound as to what exactly the “broader scope of protection” that such marks enjoy actually entails. The recent opposition brought by the owner of the trademark ‘NINA RICCI’ against the application for the word/device trademark ‘Roméo has a Gun, by Romano Ricci’ provides insight into what this broader scope looks like. Novagraaf’s Frouke Hekker sets out the key points of the ruling.

The registration of a trademark is only the first step in the effective use of a chosen brand, company or product name. In order to ensure valuable marks are protected and enforced, brand owners also need to monitor new applications to ensure that those potential new trademarks don’t infringe or potentially damage their existing rights. Where potential conflicts are identified, owners of earlier marks can raise an opposition (or challenge) to the newer trademark on the basis that it is identical or confusingly similar to their own rights.

To establish whether there is likelihood of confusion, the trademark registry will assess the visual, phonetic and conceptual similarity of the relevant trademarks, account being taken, in particular, of their distinctive and dominant components.

Broader protection for trademarks with reputation: EU trademarks “with reputation” enjoy a broader level of protection under European trademark law. Brand owners that are able to show that their EU trademarks are known to a large portion of the public cannot only act against younger identical and confusingly similar trademarks that are used for similar goods or services, but also against younger similar trademarks for goods/services that are not similar.

However, this higher level of protection is only applicable if the use of the allegedly infringing trademark is without due cause and would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier EU trademark.

Does it take ‘unfair advantage’? Case law from the Court of Justice of the EU (“CJEU”) shows that a third party can be said to make unfair advantage of a trademark: “where [it] attempts, through the use of a sign similar to a trademark with a reputation, to ride on the coattails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of its own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark”.

Is it ‘detrimental’ to the earlier mark’s distinctive character or reputation? Detriment to a trademark’s distinctive character – also known as ‘dilution’ – relates to the risk that the third party’s use of the mark or similar marks would negatively impact the earlier trademark. The stronger the earlier mark’s distinctive character and reputation, the easier it will be to prove detriment.

When can a mark be considered to be a trademark with reputation? In order to qualify as a mark with reputation, an EU trademark owner must be able to show that the mark has a reputation in a substantial part of the EU. In practice, this means that there must be a certain degree of knowledge of the mark among the relevant public; however, CJEU case law states that this degree of knowledge can not be translated into a specific percentage. Instead, when examining the question of reputation, the relevant facts of the case needed to be taken into consideration; in particular, the market share held by the trademark, the intensity, geographical extent and duration of its use and the size of the investment made by the undertaking in promoting it.

Nina Ricci versus Roméo has a Gun, by Romano Ricci: In the opposition proceedings between the owner of the EU trademark ‘Nina Ricci’ and applicant for the word/figurative mark ‘Roméo has a Gun, by Romano Ricci’, the Board of Appeal of the EU Intellectual Property Office (EUIPO) ruled that the similarity between the marks was remote – the only similarity between the trademarks being the element ‘Ricci’. However, the word/figurative mark ‘Roméo has a Gun, by Romano Ricci’ was requested for identical goods, such as perfumes and clothing. Moreover, the reputation of the Nina Ricci brand was successfully proven.

The Board of Appeal concluded, therefore, that the trademark application for ‘Roméo has a Gun, by Romano Ricci’ had to be refused on the basis that applicant was attempting to profit from the reputation of the earlier mark. In addition, the phrase ‘has a gun’ was deemed detrimental to the reputation of the Nina Ricci trademark.

The applicant of ‘Roméo has a Gun, by Romano Ricci’ appealed to the CJEU without success. That court agreed with the ruling and added that the element ‘Roméo has a Gun’ could be understood as a specific product of the brand ‘Romano Ricci’. The CJEU also held that, because Nina Ricci is known for the use of flowery, romantic and classical themes for its products and the applicant of the word/figurative mark also chose flowery and romantic elements, the attempt to take unfair advantage by the applicant of the word/ figurative mark was underlined.

Frouke Hekker is the head of the Competence Centre, Novagraaf’s internal knowledge centre in the field of intellectual property.