Problem child: CJEU dismisses BAMBINO LÜK appeal

Background

Westermann (the applicant) applied to register the figurative mark BAMBINO LÜK in May 2010.

Diset (the opponent) filed an opposition against the application on the basis of a number of earlier marks, including the earlier EU figurative mark BAMBINO (depicted below), alleging a likelihood of confusion. The Opposition Division found a partial likelihood of confusion, refusing to register the mark for the majority of the goods applied for. The applicant appealed to the Board of Appeal, who upheld the appeal in part, allowing the registration of the trade mark applied for in respect of certain goods, but dismissing the appeal in respect of the remaining goods.

The applicant then appealed to the GC, arguing that the word element "bambino" was descriptive and lacked distinctive character and that the additional elements, the stylised child in the earlier mark and the word "lük" in the mark applied for, served to prevent any likelihood of confusion. It was submitted that the "bambino" element of the earlier mark had a weak distinctive character because "bambino" means 'baby' or 'young child' in some European languages and the earlier mark covered goods and services for children. The GC dismissed the appeal, finding that the fact that the earlier mark had been registered meant that it had the necessary minimum of inherent distinctiveness for registration, and a dispute as to the earlier mark's minimum distinctive character could not form the subject matter of opposition proceedings.

On appeal to the CJEU, the applicant submitted that the GC had erred in law and distorted the facts by taking into account the earlier EU figurative mark BAMBINO in its review of the Board of Appeal's assessment of the likelihood of confusion when the mark had been revoked and no longer had any effect at the time the applicant brought its action before the GC. The applicant had informed the GC of the decision revoking the earlier mark, however it had refused to admit the letter (this formed the basis of a separate ground of appeal to the CJEU, which was dismissed). It was argued that the case should have been remitted to the Board of Appeal in order to have the opposition assessed on the basis of the opponent's marks other than the earlier BAMBINO mark at issue.

Following a revocation action brought by the applicant, the earlier EU figurative mark was revoked from June 2013. The date of revocation was, however, subsequent to the Board of Appeal's decision dated April 2013. The CJEU held that in light of this and in line with established case law, the GC was not required to take into account the EUIPO decision revoking the earlier mark. The GC could only annul or alter a decision of the Board of Appeal if, at the date on which the Board of Appeal decision was adopted, one of the grounds for annulment or alteration set out in Article 65(2) of the EUTM Regulation applied.

The applicant further argued that the GC had been wrong to find the word element "bambino" was the dominant element in the marks at issue and therefore led to a similarity between the signs and a likelihood of confusion. This argument was also dismissed by the CJEU, which noted that an appeal is limited to points of law, and as there was no distortion of the facts or evidence in the present case, the argument was inadmissible.

In short

This decision highlights the importance of filing a revocation action as early as possible. In this case, had the revocation action been filed earlier, a decision revoking the earlier mark could well have been received before the Board of Appeal decision was issued, in which case the earlier mark may not have been taken into account. In such circumstances a request that the appeal proceedings be suspended pending the outcome of the revocation action should always be considered. It is unclear why Westermann requested revocation of the earlier mark rather than invalidation – the latter would have had the effect of striking the mark off the register, as if it had never been filed. In such circumstances, it is difficult to see how the mark could remain a bar to the application.

Case details at a glance

Jurisdiction: European Union
Decision level: Court of Justice of the European Union
Parties: Westermann Lernspielverlage GmbH v EUIPO
Citation: C-482/15 P
Date: 26 October 2016
Full decision: http://dycip.com/c48215p