On October 27th, 2016, the General Court of the European Union has dismissed the action brought by El Corte Ingles, S.A. against the Decision of the European Trademark Office which had also rejected their claims against registration of the mark of the EU “THE ENGLISH CUT”, in class 25 (for clothing, footwear, headgear).
These proceedings started a long time ago, namely in 2010, with the opposition filed against registration of the above referred trademark by the well-known plaintiff. That opposition was based on two grounds, i.e. likelihood of confusion (similarity/identity in respect of the earlier marks ‘EL CORTE INGLES’ and between the products/services they covered) and that the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark. First of all, we should note that according to established case law, it is required a lower level of similarity between the signs for the second plea and, in return, strong evidence must be submitted, taking into account its exceptional nature.
Both the opposition and the appeal were dismissed by EUIPO due to the following reasons: concerning likelihood of confusion, the trademarks only had a minimum conceptual link, which was even mitigated by the fact that a high knowledge of the English language is not expected from the average consumer in Spain, and no similarity from a visual or phonetic point of view. As for the second plea was concerned, EUIPO, while acknowledging that the opponent’s trademark could be reputed in Spain, rejected it as no evidence of the detriment that might be caused to the earlier mark by the applicant was submitted. However, the Board of Appeal suggested the opponent to file an invalidity application based on bad faith once the contested trademark was registered.
Nevertheless, El Corte Ingles, SA appealed the Decision of the EUIPO Board of Appeal before the General Court of the EU, which maintained the Decision of the Trademark Office in October 2014. However, the next instance (the Court of Justice of the EU) sent the case back to the General Court in December 2015, a it observed that the previous judgment has erred in evaluating the similarity between the signs concerning the ground relating to reputation, which required less similarity between the signs than the likelihood of confusion.
The General Court, in its judgment of October 2016, has reiterated the non-application of the ground of refusal regarding the damage that could be caused to the reputation of the earlier mark, since the plaintiff had not proved that the use without due cause of the sign could cause damage to the reputation of the earlier mark. The Court has not evaluated the existence of likelihood of confusion, as the appreciation thereof had already become final.