In the context of the Intellectual Property and Knowledge Management (IPKM) master programme, we proudly present the expert lecture by Thomas Frydendahl from EUIPO Boards of Appeal on 24 November 2022, at 18:30 CET in the Feestzaal, Faculty of Law. Thomas will discuss with us how the unitary character of EUTMs can be reconciled with established case law that certain marks can be descriptive in one Member State but not in others. Feel warmly invited to join us in the Feestzaal!
In the context of Art. 8(1)(b) EUTMR, the CJEU has found that the more distinctive the earlier mark, the greater will be the likelihood of confusion (C-251/95, ‘SABEL’, §§ 23-24) and, conversely, that where marks coincide in an element that is weakly distinctive or descriptive, this will not often lead to a likelihood of confusion (C-705/17, ‘HANSSON’, § 55).
However, Art. 1(2) EUTMR, establishes a unitary character for EU trademarks. The CJEU has interpreted this to mean, that - in administrative proceedings - an EUTM can be successfully relied on against another EUTM if the former would be adversely affected only in part of the Union (C-514/06P, ‘ARMACELL’, § 57).
So how can these staples of case-law be reconciled in a territory with an extreme degree of lingual diversity such as the European union? Where a single term maybe descriptive in some parts of the EU, but not in others?
To explore this question, a closer look will be taken of the EUIPO Boards of Appeal decision R 1062/2020-1, which regarded an opposition against the contested sign based on an earlier mark, both of which regarded a range of identical or similar yoga-related services.