“LARA CROFT” vs “LoraCraft”: un caso di tutela della rinomanza extramerceologica

Marcel Pemsel su IPKat segnala Opposition Division EUIPO Nо B 3 180 999 del 30.11.2023.

L’ufficio esclude la confondibilità ordinaria ex art. 8.1, EUTMR per carenza di affinità merceologica (corde e packaging per imballaggio vs. ceramiche etc.)

Riconosce però la tutela allargata per ingiustificato vantaggio dalla notorietà altrui ex art. 8,.5 EUTMR

<<It has to be recalled that the contested goods have a link to the earlier reputed goods and services, as explained in section c) above. Furthermore, the earlier mark enjoys a high reputation in the European Union in connection with video games. Consequently, and according to case-law, earlier marks with a strong reputation will be recognised in almost any context, particularly as a result of their above-average quality, which reflects a positive message, influencing the choice of the consumers as regards goods or services of other producers/providers.

Furthermore, it is important to underline that the earlier trade mark is inherently distinctive in relation to the goods and services they are registered for. This fact makes it even more likely that the applicant will attempt to benefit from the value of the opponent’s sign since such a distinctive trade mark as “Lara Croft” will be recognised in almost any context. The mere fact that the applicant changed the position of two letters will in no way impede such a recognition, as the structure of the contested sign – female Christian name and last name – is still identical to the earlier right.

An unfair advantage occurs when a third party exploits the reputation of the earlier mark to the benefit of its own marketing efforts. In practice, the applicant ‘hooks onto’ the renowned mark and uses it as a vehicle to encourage consumer interest in its own products. The advantage for the applicant is a substantial saving on investment in promotion and publicity for its own mark, since it benefits from that which has made the earlier mark famous. This is unfair because it is done in a parasitic way (08/02/2002, R 472/2001 1, BIBA/ BIBA).

Furthermore, in view of the earlier trade mark special attractiveness, it may be exploited even outside its natural market sector, by merchandising (as demonstrated by the opponent). Hence, as the earlier mark has a high reputation and the commercial and as especially the merchandising context in which the goods are promoted are very close, the Opposition Division can accept the opponent’s claim that consumers of goods in Class 9 and in Class 22 make a connection between the applicant’s goods and the reputed mark Lara Croft used by the opponent.

The opponent has invested large sums of money and effort in creating a certain brand image associated with its trade mark, by creating a fictious character which attracts the admiration of the public, inciting them to be a close as possible to this character (for instance women dressed like Lara Croft in fan events), and one way of doing this is by buying merchandising goods, bearing the name Lara Croft.

This image associated with a trade mark confers on it an – often significant – economic value, which is independent of that of the goods for which it is registered. Consequently, Article 8(5) EUTMR aims at protecting this advertising function and the investment made in creating a certain brand image by granting protection to reputed trade mark, irrespective of the similarity of the goods or services or of a likelihood of confusion, provided it can be demonstrated that use of the contested application without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark.

The notion of taking unfair advantage of distinctiveness or repute covers cases where the applicant benefits from the attractiveness of the earlier right by using for its services a sign that is similar (or identical) to one widely known in the market and, therefore, misappropriating its attractive powers and advertising value, or exploiting its reputation, image and prestige. This may lead to unacceptable situations of commercial parasitism, where the applicant is allowed to take a ‘free ride’ on the investment of the opponent in promoting and building up goodwill for its mark, as it may stimulate sales of its products to an extent that is disproportionately high for the size of its promotional investment. In its judgement of 18/06/2009, C 487/07, L’Oréal, EU:C:2009:378, § 41, 49, the Court indicated that unfair advantage exists where there is a transfer of the image of the mark, or of the characteristics that it projects, to the goods identified by the identical or similar sign. By riding on the coat-tails of the reputed mark, the applicant benefits from the power of attraction, reputation and prestige of the reputed mark. The applicant also exploits, without paying any financial compensation, the marketing effort expended by the proprietor of the earlier mark in order to create and maintain the image of that mark.

The use of the mark applied for in connection with the abovementioned goods will almost certainly draw the relevant consumer’s attention to the opponent’s highly similar and very well-known mark. The contested mark will become associated with the aura of fame that surrounds the Lara Croft brand. Many consumers are very likely to think that there is a direct connection between the goods of the applicant, and the famous Lara Croft character, as the sings are made up of identical letters, or might not even notice the difference.

Article 8(5) EUTMR exists to prevent this type of situation, where one mark takes unfair advantage of its distinctive character and repute. The applicant could take unfair advantage of the fact that the public knows the trade mark Lara Croft so well, in order to introduce its own similar trade mark without incurring any great risk and the cost of introducing a totally unknown trade mark to the market.

On the basis of the above, the Opposition Division concludes that the contested trade mark will take unfair advantage of the distinctive character or the repute of the earlier trade mark.

The opponent also argues that use of the contested trade mark would be detrimental to the repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply>>.

Decisione esatta.