Brussels, 06/07/2012 (Agence Europe) - Jackson International Trading, an Austrian company, may no longer use the mark “Royal Shakespeare” for alcoholic beverages registered with the Office for Harmonisation in the Internal Market (OHIM) of trade marks and designs in 2003. The EU General Court rejected its appeal, on Friday 6 July (Ruling T-60/10), against the 2009 decision by the OHIM Board of Appeal to declare the mark invalid. It concluded that the latter was right to say that the company in question could take unfair advantage of the repute of the earlier trade mark RSC-Royal Shakespeare Company, registered in 1999.
In its judgment, the General Court first and foremost notes the similarity between the two marks, which, it says, are “visually, phonetically and conceptually similar”, to the extent that the average consumer might establish a link between them. Secondly, both marks target the public at large: “RSC-Royal Shakespeare Company” enjoys an “exceptional reputation” in the United Kingdom for theatre productions that aim at the general public, and not, as Jackson International Trading claims, at “a limited number of consumers or an elite”. Furthermore, that reputation is sufficient to establish a reputation at EU level. Thirdly, the Austrian company would benefit unduly from the repute of the existing mark. On the market for beverages, its products (beers and other drinks) would attract the attention of consumers through association with the British theatre company and the earlier brand name, thus procuring a commercial advantage compared to competitive products. This economic advantage would consist of exploiting the effort expended by the RSC in order to establish the reputation and the image of its earlier trade mark, without paying any compensation in exchange. The General Court notes, as OHIM had done, that the Austrian company had not established the existence of a “due cause for the use of the contested trade mark”. (FG/transl.jl)