There is no likelihood of confusion with your earlier national non-registered sign when you’re economically linked to the owner of the posterior trademark.
The General Court annuled in its decision of 25 September 2018 the Board of Appeal’s decision, that confirmed the invalidity of the EUTM no. 3324902 , considering that there does not exist a likelihood of confusion between the earlier French company name Gugler France and the opposed EUTM , in the light of Art. 8 (4) EUTMR.
This decision puts an end to a longlasting trademark conflict that started back in 2010 with the cancellation action filed by the French company Gugler France against the registration of the EUTM, invoking its rights on the company name under French law according to Art. 8 (4) EUTMR. The case has already been handled before the General Court in 2013/2014 (case T-674/13) and at that time, the General Court held in January 2016 that the Board of Appeal infringed its obligation to state reasons and the case was referred back to the office.
Only in January 2017, the Board of Appeal decided the case and dismissed the appeal, by confirming the existence of a likelihood of confusion between the earlier national company name and the challenged EUTM .
In its pleadings before the General Court, the trademark owner particularly referred to the complex situation existing between the parties and indicated that there could not have been any likelihood of confusion for the consumers, considering the close business relationship existing between them.
Indeed, the parties of the proceedings before the EUIPO were in intensive business relationship for almost than 10 years before the breakdown of the same for economic reasons in 2009.
In its current decision, the General Court confirmed the importance of the function of origin of a trademark, i.e. the possiblity for the consumers to identify the origin of the goods and services offered under a trademark. A likelihood of confusion exists, if the consumer might believe by error that there exists an economic linc between the owner of the trademark and the goods and services provided under the earlier sign. In case of a cancellation action, the relevant point in time to be taken into consideration for the existence of a likelihood of confusion is the filing date of the challenged trademark. In the present case, the business relationship existing between the parties before the EUIPO did not make the consumers believe by error that the companies using the GUGLER sign in France, i.e. the French company Gugler France and the owner of the challenged EUTM , as they were in fact economically linked, the French company being the distributor of the trademark owner’s goods in France.
As a consequence, the consumer, even if they believe that the companies were economically linked, would not be conducted in error as to the origin of the goods at stake, considering that the goods originate from the EUTM owner and were distributed by the French company Gugler France.
The Court confirmed that the consumer must not be aware of the economic link between the two companies, because the likelihood of confusion is to be asessed objectively.
The economic link between the owner of the prior national sign and the owner of the challenged trademark on the date on which the application for registration of the EUTM was filed, consequently precluded the finding of a likelihood of confusion.
The General Court has thus -finally- closed the windows of this complex and longlasting trademark conflict and cleared up the situation, annuling the appeal decision and consequently allowing the challenged EUTM “GUGLER” to remain registered.