Un caso di marchio nullo perchè pregiudizievole della rinomanza (o distintività) di marchio rinomato anteriore

I casi in oggetto non sono frequenti ma ora ce ne è uno deciso dal board of appeal del’EUIPO: marchio grafico a forma di coniglietto per sex toys che riproduce quasi pedissequamente prevcedetne marchio rinomato usato  per prodotti per l’infanzia.

Si tratta del 4° board of appeal 10.01.2023, case R 442/2022-4, Mercis BR c. Bunnyjuice, Inc (qui la pag. dell’ufficio ed invece  qui il link diretto al file word)

Intgeressa soprattutto:

i) a fini pratici, le prove documentali (corpose) prodotte dall’opponente a fondamento della allegazione di reputazione/rinomanza, trattata ai §§  41 ss (tra cui pure un sondaggio di mercato, § 53)

ii) il passaggio sul detriment:

<< (iv)       Use which would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark

  • The types of injury against which Article 8(5) EUTMR ensures protection for the benefit of trade marks with a reputation are, first, detriment to the distinctive character of the earlier trade mark, secondly, detriment to the repute of that mark and, thirdly, unfair advantage taken of the distinctive character or the repute of that mark which ultimately addresses the question of whether there is a positive or a negative image transfer to or from the contested sign. Just one of those three types of injury suffices for that provision to apply (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 27, 28).
  • Detriment to the repute of the earlier mark under Article 8(5) EUTMRconcerns harming the earlier mark by way of detriment to its repute. Detriment to repute relates to situations where use of the contested mark without due cause is likely to devalue the image or the prestige that a mark with reputation has acquired among the public.
  • The reputation of the earlier trade mark may be tainted or debased in this way, either when it is reproduced in an obscene, degrading or inappropriate context, or in a context that is not inherently unpleasant but that proves to be incompatible with a particular image the earlier trade mark has acquired in the eyes of the public due to the promotional efforts of its owner. The likelihood of such detriment may arise in particular from the fact that the goods or services offered by the third party possess a characteristic or a quality that is liable to have a negative impact on the image of the mark (18/06/2009, C‑487/07, L’Oréal, EU:C:2009:378, § 40).
  • As a consequence of the link established, the Board finds that, as correctly argued by the opponent, use of the contested mark would be detrimental to the repute of the earlier mark. Indeed, it is likely that use of the contested mark for the goods in Class 10 concerned would devalue the image that the earlier mark has acquired amongst the public.

As the evidence submitted by the opponent shows, the earlier mark appeals to children, instilling a sense of safety. The earlier mark stands for innocence, no aggression, no controversy and respect for the world of children encouraging them to develop and value their own identity and to express themselves in their own way allowing scope for their own imagination. The goods covered by the contested mark obviously possess characteristics which are incompatible with this image and is liable to have a negative impact on it>>.

(notizia e link da Kevin Bercimuelle-Chamot in IPKat in data odierna)