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

The Fortress Participations BV logo

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

Alder/Halder: challenging points not raised on appeal

An interesting constitutional point cropped up in the General Court's decision in Case T‑209/09, Alder Capital Ltd v Office for Harmonisation in the Internal Market, Gimv Nederland BV,  delivered yesterday. It arose within the context of a bonny battle over the cancellation of Alder's Community trade mark ALDER CAPITAL, which has been registered for financial services in Class 36.

The application for cancellation came from Halder Holdings BV (now Gimv Nederland BV), pleading earlier use of earlier registered and unregistered marks consisting of Halder, Halder Holdings, Halder Investments and Halder Interest. Likelihood of confusion was argued. At this point the story is taken up by tytoc collie's friend Marlou L.J. van de Braak (who incidentally was acting for Gimv):

"Before the Cancellation Division the case was decided on the basis of Gimv’s earlier trade name rights, but considered that there had been no genuine use of Gimv's earlier trade marks. When Alder Capital appealed, Gimv asked the Board of Appeal to reconsider the Cancellation Division's findings on proof of use, citing Article 8(3) of the Rules of Procedure which provides that the defendant may, in his response, seek a decision annulling or altering the contested decision on a point not raised in the appeal. The Board of Appeal did just that, accepted that the earlier trade marks had indeed been genuinely used, then held in favour of Gimv on the basis of its earlier trade marks, instead of the earlier trade names.

Alder Capital again appealed and claimed that Community Trade Mark Regulation does not allow for an ancillary appeal and that Article 8(3) of the Rules of Procedure is invalid because the European Commission did not have the power to introduce, by “tertiary” legislation, additional ways to appeal a first instance decision. Gimv argued that, regardless of this argument, the Board of Appeal may still exercise any power within the competence of the Cancellation Division and is thus entitled and even obliged to examine genuine use of the trade marks on its own motion, whether Gimv requested them to do so or not. Gimv also claimed, based on case law, that a separate appeal is unnecessary if one is not adversely affected in first instance; Article 8(3) is merely a rule of procedural efficiency and not legislation creating the possibility of ancillary appeal. 

The General Court ruled that the Board of Appeal was indeed required to carry out a full examination, in terms both of law and of fact.

With regard to genuine use, some interesting considerations are that:

- Use of the term “halder” independently of any mention of its corporate form or investment fund number constitutes use as a mark for the services referred to in the advertisements;
- Press articles can in some cases constitute evidence of use of a mark, since the list of permissible evidence is not exhaustive;
- The fact that the press articles were written by a journalist, and not by Gimv for advertising purposes, cannot mean that they have no evidentiary value;
- The use of “halder” to designate investment funds, which frequently take the form of separate companies, constitutes not only trade name use but also use as a mark for the subcategories of financial services of such funds, since that use establishes a link between the sign Halder and such financial services;
- The fact that the names of the funds (Halder I, Halder II etc.) are composed of the term “halder”, to which a Roman numeral has been added, does not call genuine use into question since, because of their brevity, weak distinctive character and ancillary position, those additions do not alter the distinctive character of the mark in the form in which it was registered;
- For genuine use there is no requirement that the services provided belawful or that the mark must be used in good faith".

tytoc collie notes the point that press articles written by a journalist, and not by Gimv for advertising purposes, cannot be said to lack evidentiary value. He has long believed that third party use, even if unauthorised -- for example by importers of infringing grey goods -- should constitute genuine use because its effect is to fulfil the essential function of the mark.

Interesting facts about Alder here
Alderman here
Aldermaston here