Tropical illusions - The importance of being clear on trade mark classes

Introduction

A hard-fought struggle between rival TROPICAL trade marks has delivered up another powerful reminder from the European Unions General Court that, when it comes to class descriptions, the devil lies in the detail.

Background

In October 1985, Aviário Tropical registered the Portuguese national word mark TROPICAL, in respect of “food for fish, live fish and live plants”.

Separately, on 31 October 2003, Andrzej Ogrodnik applied for registration of the figurative EU Trade Mark shown below. That application was later transferred to Tadeusz Ogrodnik, and eventually registered on 07 September 2007 in respect of two classes (5 and 31).

 

In November 2011 Aviário Tropical applied to have Ogrodnik’s trade mark declared invalid in respect of all the goods for which it was registered. Having initially been rejected by the Cancellation Division, Aviário Tropical then won at the Board of Appeal. The EUIPO then appealed that decision to the General Court, which gave its judgment on 21 July of this year.

The decision

The Board of Appeal had concluded that the goods covered by the Ogrodnik EU Trade Mark were identical or similar to an average degree to those covered by the Portuguese mark. The court found that this was based on a misinterpretation of the class descriptions, and that those designated for Ogrodnik’s EU Trade Mark in fact bestowed a much broader scope.

The court painstakingly examined the text of class 31, which reads as follows:

“Food [of various forms] for fauna, especially for fish, ornamental fish, birds, reptiles, amphibians and breeded small animals, food for fauna containing nutritives, products and preparations for the cultivation of plants and aquarium plants and for the breeding of fish, ornamental fish, birds, reptiles, amphibians and breeded small animals; excluding bird feed and bird treats”.

The court noted that the ambiguous inclusion of “especially”, and the rather clumsy use of punctuation, meant that the words were susceptible to multiple possible interpretations. However, it concluded, in Ogrodnik’s favour, that the words shown in bold above could not even be said to cover the same goods as (let alone be identical to) the “food for fish, live fish and live plants” applicable to the Aviário Tropical EUTM.

It then turned its focus to class 5, which encompasses the following:

“Veterinary, therapeutic, disinfecting and sanitary products and preparations for use in aquaristics, terraristics, fauna breeding and flora cultivation”.

Here, the Board of Appeal had held that the listed goods were similar to an average degree to those covered by the Portuguese mark, on the basis that they were distributed by the same companies at the same points of sale, and targeted the same end-consumers.

While the court agreed that those three factors were relevant, it drew very different conclusions. In its assessment, there was no evidence that class 5 products have the same distribution channels or points of sale as fish food, and the mere fact that they might be sold in the same place would not necessarily confuse the relevant public into believing they had a common origin. Furthermore, the court noted that these sets of goods might in fact be targeted at very different clientele (notwithstanding that there would also be areas of overlap). In sum, therefore, average similarity could not be made out.

Rounding out its decision, the court accepted the appellant’s argument that the Board of Appeal had also erred by failing to state reasons on the issue of the coexistence of the marks, despite this being a factor in assessing the likelihood of confusion between them.

Practical implications

This judgment at first glance seems surprising. There was absolute consensus between the Board of Appeal and the General Court that the two trade marks were visually, phonetically and conceptually highly similar overall. On this basis, it might have seemed Aviário Tropical was home and dry. However, the Board of Appeal’s decision was largely compromised by faulty analysis of something which might seem to be a mere technicality - class descriptions.

This judgment, then, is a timely reminder that the issue of comparing and contrasting signs is only one feature of trade mark turf wars; class designations are another, and are arguably harder to grasp, being less conspicuous and tangled up in interpretative intricacies. Nevertheless, it is imperative for anyone making, protecting or challenging a filing to understand their scope and limitations.

Finally, it must be noted that it is highly peculiar that Aviário Tropical was permitted to register the TROPICAL trade mark in the first place, given that the word is a descriptive term for fish in Portuguese. With this in mind, the court’s judgment highlights an interesting interplay between EU and national trade mark regimes, which has important implications. The court, like the Board of Appeal before it, was obliged by EU case law to acknowledge a certain degree of distinctiveness in the earlier national trade mark. However, for the reason given above, it is doubtful whether the Portuguese trade mark in question actually deserves to be awarded any such distinctiveness. On this basis, it would perhaps have been more sensible for the Polish EU Trade Mark owner to have brought invalidation proceedings directly in Portugal.