There are several factors that may be considered when assessing the likelihood of confusion in an opposition proceeding before the European Union Intellectual Property Office (EUIPO). One of them is the existence of a family or series of marks. This article aims to shed some light on this factor which is possibly one of the least known and used by opponents.
Several earlier marks displaying characteristics that allow them to be regarded as part of a single family or series, may be relevant in an opposition proceeding against a EUTM application, as it may create the possibility of association between them and the contested mark and, consequently, likelihood of confusion.
The three cumulative conditions
The Court of Justice of the European Union (CJEU) has defined three main cumulative requirements for a series of marks to be relevant when assessing the likelihood of confusion with the opposed trademark.
In the case C-234/06 P (2007), the European Court of Justice (ECJ) confirmed the decision of the General Court (EGC) in the case T-194/03 (2006), which established that:
First requirement: for a series of marks to exist it must be formed by at least three used trademarks.
Second requirement: the opponent must provide evidence of use in relation to the individual marks that compose the series of marks (at least of three).
Third requirement: not only the opposed trademark has to be similar to each trademark that forms the series, but it has to bear features able to result in association by the relevant public with the series, in the sense that they believe that it is also part of the series.
Time limits
The opponent that wishes to claim the existence of a series of trademarks as grounds for an opposition against a EUTM application, has to do so before the time limit established by the EUIPO for the substantiation of the opposition. Also within this time period, the opponent has to provide the evidence of use in relation to the marks that form the series. An additional requirement regarding this evidence of use is that it has to be to an extent that shows that the relevant public came to know this series of trademarks as indicating that certain goods or services are from a certain undertaking.
Do the trademarks have to be registered?
It is not a requirement that the trademarks composing the series must be registered.
Comparison of the family of marks with the opposed trademark
The comparison of the opposed trademark must be made with the series of trademarks as a whole. The goal of the comparison is to assess if the trademark bears features that will likely lead the relevant public to associate it with the earlier series of trademarks.
When comparing the trademarks one aspect to verify is whether the common element of the marks that compose the series appears in the opposed trademark in the same or in a different position or with a different meaning.
Additionally, this common element must be distinctive. If the other elements of the trademarks that form the series have a higher degree of distinctive character, they will be more important to the relevant public's perception and, consequently, the reproduction of the non-distinctive element by the opposed trademark will not likely result in association.
Another aspect to take into consideration is that the common element of the trademarks that form the series must be identical or at least very similar and be distinctive and have an independent role in the sign as a whole.
A relevant indication that there is a risk of association is if the common element appears in the same position in the trademarks of the series and in the same position in the opposed trademark. The contrary is also true: if the position where it appears in the opposed sign is different, then the likelihood of association is low.
Examples of cases
The EUIPO's trademark Guidelines provide some examples of cases where series of trademarks were claimed as grounds for opposition.
In the appeal R 838/2001-1 (2002), the series of trademarks was composed by the following trademarks: ‘Ophtal', ‘Crom-Ophtal', ‘Visc-Ophtal', ‘Pan-Ophtal'. The opposed trademark was ‘Alergoftal'.
In this case the Board rejected the claim considering that: a) the trademarks of the series included the suffix ‘-ophtal' (and not ‘oftal') preceded by a hyphen; b) the disjointed prefixes ‘Pan-',‘ Crom-' and ‘ Visc-' affected the overall impression made by each of the marks as a whole, c) the initial elements being different from ‘Alerg'.
In a similar case the EGC (T-160/09, 2011) decided that the opposed trademark ‘Oftal Cusi' would not be associated with the series of trademarks composed by ‘Tim Ophtal', ‘Sic Ophtal' and ‘Lac Ophtal', because the elements ‘Tim', ‘Sic' and Lac' were distinctive, whereas ‘Ophtal' denoted ophthalmologic preparations, being a weaker element.
On the other hand, in the case T-301/09 (2009) that opposed the EUTM application ‘Citigate' and the series of trademarks ‘Citibank', ‘Citigold', ‘Citicorp', ‘Citibond', ‘Citicard', etc, the EGC decided that there was likelihood of association. This was due to the evidence provided by the opponent showing that ‘Citibank' was a “house mark” and the other trademarks were sub-brands based on the Citi concept.
In fact the factors previously mentioned are verified in this case, such as ‘Citi' being more distinctive than ‘bank', ‘gold', ‘corp', ‘bond', and ‘card', and ‘Citi' appearing in the same position in the trademarks that compose the series of trademarks and also in the opposed trademark.
Not every opponent has a series of trademarks, nor all series of trademarks will comply with the above-mentioned requirements in relation to a specific EUTM application. However, the owners of those that do, have the right to claim them as grounds for opposition.
This is a co-published article, which was originally published in the World Intellectual Property Review (WIPR).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.