Case Brief

In 2021, a famous internet company discovered that its trademark of Class 9 was registered preemptively in Class 28 in the EU, and the designated goods was "toys", etc.

For the above trademark, the famous internet company entrusted Unitalen to file an opposition application. In the opposition case, we advocated that based on the confusion and misidentification clause of Article 8 (1) (b) and the well-known trademark clause of Article 8 (5) of the EU Trademark Law, the trademark applied for and the opposer’s prior identical trademark on goods of Class 9 and services of Class 41 constituted similar trademarks on the same or similar services, which could easily lead to confusion and misunderstanding of consumers; and the application for its registration involved improper use of the reputation of the opposer’s prior trademark, and should not be approved.

After review, the European Union Intellectual Property Office (EUIPO) did not support the aforementioned opposition reasons. Subsequently, Unitalen was commissioned by the client to submit an opposition review application. In the opposition review application, Unitalen lawyers communicated multiple times with the lawyers of the foreign firm and asserted the strong correlation between related software and services of Class 9; 41 and toys of Class 28 by searching for prior cases, collecting and sorting evidence of use in the EU, and providing trademark application registration files and use information of multiple companies in the same industry operating Class 9; 41 and Class 28 simultaneously, and added a large amount of evidence of use in the EU to prove the enjoyed reputation.

After a review examination, the Review and Adjudication Board of the EUIPO determined that goods of "toys" and the like in Class 28 and related goods in Class 9 constituted a low degree of similarity. At the same time, in combination with the supplementary evidence submitted in the review, the Examiner believed that the client's trademark had accumulated a relatively high reputation, and the application for the disputed trademark constituted an improper free-riding behavior of attaching to the reputation of the prior trademark. Therefore, none of the designated goods was allowed, and it was ruled that the opposed party bore the reasonable cost of the opposition.

Case Analysis

After opposition and opposition review, Unitalen ultimately assisted the client with successful cross-class opposition to the registered trademark of Class 28 in the EU.

One of the difficulties in the case lies in the limited relevance of goods and the difficulty of cross-class protection. When determining the similarity of goods, the EUIPO, without such divisions as the similar groups in mainland China, mainly depends on the function, use, target groups, consumption channels, and the duty of attention of the relevant public of the goods. At the same time, it will refer to the prior cases.

After searching, in the EU's prior cases, Class 9 was only determined to constitute a similarity with "gaming equipment" in Class 28, but not constitute a similarity with "toys" in Class 28. Based on the aforementioned unfavorable factors, the Unitalen team collaborated with the lawyers of the foreign firm to handle the case and actively collected and sorted favorable cases, evidence, and situations in the same industry. As a result, we successfully convinced the Examiner to support the assertion of similarity of cross-class goods and then support the confusion and misidentification clause in Article 8 (1) (b) on some of the goods.

The second difficulty in the case lies in the collection of evidence for the well-known trademark. The application of the well-known trademark clause of Article 8 (5) of the EU Trademark Law requires to meet the following conditions: (i) a previously registered trademark must have a reputation in the relevant region; (ii) the disputed application must be identical or similar to the prior trademark; (iii) the use of the mark applied for must be able to obtain an unfair advantage, or damage the reputation or distinctiveness of the prior mark; and (iv) such use must lack justified reasons.

In this case, the opposer’s products were launched in the EU only 9 months earlier than the application date of the disputed trademark, less than a year. During the opposition review stage, Unitalen assisted the client in collecting and adding a large amount of use evidence. At the same time, through argumentation of relevant markets in the same industry, Unitalen advocated that the disputed trademark unfairly utilized the distinctiveness and reputation of the prior trademark without justified reasons and benefited from the power of attraction, the reputation, and the prestige of the prior trademark, constituting a "parasitism" and "free-riding" behavior. Finally, the prior trademark was successfully recognized as a well-known trademark on "computer software (recorded)" and the like in Class 9, and thus the goods in Class 28 not constituting a similarity were successfully opposed.

The case has referential significance for enterprises regarding how to crack down on overseas trademark registration in a cross-class manner and how to assert the well-known trademark clause by collecting use evidence in the case where the trademark is used in a relatively short time.