Use of financial services sector mark in City of London of 'more than local significance;

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The extent to which the scope of use of an earlier mark which is cited in aid of a Community trade mark opposition or cancellation is becoming an increasingly lively topic.  It was no surprise to tytoc collie, therefore, when his friend Roland Mallinson (Taylor Wessing) just happened to wonder whether the readers of this weblog might be interested in a recent decision of the OHIM Board of Appeal in Case R 355/2009-2 Fortress Investment Group LLC and Fortress Investment Group (UK) Ltd v Fortress Participations BV, a decision of 8 March 2011 which, at the time of checking, was not yet available online -- but you can read it here.  Let Roland (who acted for the two applicants/appellants, 'FIG') take up the story:

"FIG had sought to cancel FP's two Community trade marks for the mark FORTRESS (one a word and the other a device) on the basis of an earlier UK passing off right. The OHIM Cancellation Division rejected the applications for cancellation but the OHIM Board of Appeal has reversed these decisions.  Since the two mirror each other, I'll just deal with one of them here. In each case the Board accepted the evidence of the prior passing off right that had previously been rejected at first instance.

In terms of interesting law: 

• Use of a mark on financial services in the City of London was held to be use of "more than mere local significance" and so could give rise to a prior right to be relied upon in an objection under Article 8(4) of the Community Trade Mark Regulation (CTMR). The test is not just geographic but also economic. London is the seat of all government institutions and bodies and the City is one of the leading financial centres of the world (para 46). The same could presumably be true in other sectors which may have limited or very focused geographic markets (perhaps diamonds and Amsterdam?). 

• The Board held that its discretion to admit additional evidence at appeal stage is broader than in oppositions due to public policy considerations; unlike an opposition, a cancellation action is a final process. It also helped in this case that the new evidence merely corroborated and confirmed the previous evidence (para 33). 

• Contrary to the decision of the Cancellation Division, there is no obligation under Article 8(4) to show use of the brand relied upon during the five year period prior to filing the cancellation action. The Board distinguished reliance on a prior (unregistered) passing off right to reliance on a prior CTM or national mark. However, the Board nevertheless still ruled that use of the prior mark had to be shown not only for the period prior to the CTM filing date (in order to establish the earlier unregistered right) but also that the use had to be continuous right up the date of filing the cancellation action (para 44). This requirement was stated to be independent of national law. It seems to derive from the CTMR, perhaps from Article 8(4) itself, but the Board does not make this clear. Article 8(4) requires the prior mark relied upon to be "used in the course of trade". Does the passive past participle "used" mean the use has to be right up to the date of filing the opposition/cancellation action or just previously used in the past? The Board referred also to Rule 19(2)(d) CTM Implementing Regulations. However, this just requires the submission of evidence of the "acquisition, continued existence and scope of protection" of the prior right. Under English law, the "continued existence" today of a prior passing off right doesn't require use today. It is possible to sue in reliance on historic or residual goodwill in a brand that has not been used for some years (cf Ad-Lib Club v Granville [1972] RPC 673). In fact, in this case, it didn't matter since it was accepted that FIG was still using the brand".

If anyone fancies answering these questions, this weblog makes itself available for that very purpose.

Flying fortress here
Fortress Europe here