During the summer, the Court of Justice of the European Union ruled in Case C-714/18 P. The main issues in the appealed case was, partly whether based on Taiga`s evidence to prove genuine use for inter alia clothing it was possible to distinguish and establish an independent subcategory of clothing that protects against storms (only cold, wind and / or rain), and partly if the word Taiga has a precise and immediate meaning for a significant part of the business community (consumers in the EU).
The German company ACTC GmbH, which sells fashion clothes intended for a younger audience, applied in 2012 for an EU trademark registration for the word “tigha“. The application covered i.a. and in summary clothing, footwear and headgear in Class 25.
Taiga AB, which develops and sells clothing for demanding work environments, partly for the police, ambulance and military personnel and partly for hunters and other outdoor activities , is holder of i.a. EU trademark registration for the word TAIGA covering the list of goods:
Clothing, outerwear, underwear, footwear, headgear, shoes and work boots, work coats, gloves, belts and socks in Class 25.
In 2013, Taiga AB opposed the application for tigha and argued that the trademark is identical with and similar to with TAIGA trademark. As Taiga’s EUTM had been registered for more than five years at the time of the opposition, ACTC GmbH requested Taiga AB to present evidence of genuine use in the EU for registered goods. If a mark has only been used for a certain part of the goods, the mark’s scope of protection is limited to these goods. The Opposition Division at EUIPO rejected the opposition. Taiga AB appealed and the fourth Board of Appeal decided that Taiga AB had shown genuine use for all goods in the registration except for shoes and work boots, and that the trademarks tigha and TAIGA are confusingly similar. ACTC GmbH appealed against the decision with the General Court. The General Court did not make a different assessment of the evidence or assessment of the likelihood of confusion and upheld the decision of the Board of Appeal, namely that the marks were confusingly similar. ACTC GmbH appealed with the Court of Justice of the European Union (CJEU), where only so-called judicial issues are adjudicated, not questions of evidence.
The dispute with the Court of Justice of the European Union
ACTC GmbH claimed that the General Court erred in finding that the goods for which Taiga AB had shown genuine use did not constitute an independent subcategory of Class 25. The purpose of the claim was, of course, to limit Taiga AB’s trademark protection for TAIGA to ‘protective clothing’ in order to be able to claim that these goods are not similar to the goods for which the mark tigha was sought to be registered.
The CJEU has held, with reference to previous judgments, that the intended use and purpose of goods / services constitutes a decisive criterion in the definition of an independent subcategory of goods / services. That the goods / services are aimed at different type of consumers is not relevant for the assessment.
Consequently, if, as in the present case, it turns out that the goods in question – as so often is – have several purposes and intended uses, it cannot be determined whether they are a certain subcategory of goods by, individually, taking into account each of the purposes that these goods may have. With such an approach, it would not be possible to consistently identify independent subcategories of goods, which would lead to an overly far-reaching restriction of the rights of the proprietor of the earlier mark, inter alia by its legitimate interest in expanding its range of goods or services for which the earlier mark has been registered would not be adequately taken into account. The CJEU stated that it was therefore right of the General Court not to make a separate assessment of the purpose of each of the goods in question, i.e. to “dress”, “cover”, “cover” or “protect” the human body, as these different uses are combined to place these products on the market.
The appeal was therefore rejected on this ground.
Taiga has a precise and immediate meaning
According to the Court’s previous case – law, conceptual differences between the opposing marks may affect the visual and phonetic similarities if one of the marks in question has a clear and definite meaning for the consumers constituting the relevant public, so that the meaning can be immediately understood by those consumers.
The General Court stated that for consumers located in the northern and eastern parts of the EU, who are very likely to associate the word taiga with the boreal coniferous forest belt, there is a conceptual difference between the opposing characteristics.
For “average consumers” located in parts of the Union other than the northern and eastern parts of the EU, in particular consumers in the southern part of the EU and English-speaking consumers, which form an essential part of the business community, it has not been established (proven) that there is a clear conceptual difference between the opposing signs tigha – TAIGA.
Since the meaning of a word, in accordance with the established case-law, must be assessed in relation to the understanding of the entire relevant public and not limited to the perception of consumers in only one part of the relevant area, the Court of First Instance dismissed the ACTC’s argument that the meaning of the word taiga could exert the effect of the visual and phonetic similarities between the opposing characteristics.
In its appeal to the CJEU, the ACTC criticized the General Court for incorrect application of the law by finding that the ACTC had not shown that the concept of taiga did not have a precise and immediate meaning for the Union as a whole. ACTC argued that according to previous practice, it is sufficient for a word to be understood only by a part of the EU. In his opinion, the Advocate General stated that the wording -whole EU- was intended to consider the understanding of consumers located in all the states that are part of the Union. This was an EU trademark and thus the consumers in the whole EU is the relevant public. In addition, ACTC was considered to have misunderstood prior case-law. The Court found that if there are visual and phonetic similarities between the opposing signs for a substantial part of the relevant public, and it is not established that there are such conceptual differences between the characteristics which may affect those similarities for that part of the relevant public, the General Court shall make an overall assessment of the risk of the likelihood of confusion. The General Court did not err in applying the law because the appellant had not proved that the concept of ‘taïga’ had a ‘precise and immediate meaning’ for a substantial part of the relevant public.
The judgment means, in addition to a confirmation that the tigha brand is confusingly similar to the TAIGA brand and therefore cannot be registered, that it is difficult, if not impossible, to demonstrate an independent subcategory for the type of clothing given a variety of uses and purposes. Furthermore, it appears that in order for a conceptual difference between two brands to outweigh possible visual and phonetic similarity, it is necessary that the conceptual meaning is understood by the relevant public in a significant part of the EU, which in this assessment seems to be more than one member state.
If you have any questions as regard to the decision please feel free to contact Rune Pettersson.