30. November 2018
Smoke on the waters of the EUIPO.
Richie Blackmore ("RB") former guitarist of seminal metal band Deep Purple, applied to register DEEP PURPLE as an EU trade mark for a broad range of goods and services including (among many others) audio recordings and computer games (class 9), clothing (class 25) and class 41 (entertainment services).
Ian Paice ("IP") the current drummer of Deep Purple, opposed that application in its entirety based on the unregistered Deep Purple mark in relation to various items of merchandising (a narrower list of goods and services than the application but still across all 3 classes and more) and the argument that it would breach the law of passing off, in line with Article 8(4) of the EU TM Regulation.
The Opposition Division and the Board of Appeal allowed the registration of the mark for some of the goods in class 9 concerning computer hardware and software because there had been no evidence that the band had sold such items.
Three different appeals were brought before the General Court.
The first and second ones (references T-344/16 and T-345/16), filed by RB, were based on a variety of grounds stating that the first two requirements of passing off (goodwill, misrepresentation) had not been established. In particular, they included the claims that the evidence provided was insufficient to establish goodwill, and furthermore that the Board of Appeal should not have accepted late evidence.
The General Court ruled that the evidence submitted was indeed sufficient. Addressing the issue of timing, it highlighted that the Board of Appeal did have the discretion to admit late evidence. The relevant criteria for the admissibility of late evidence were laid down in OHIM v Kaul, C‑29/05: the material needs to be relevant and the circumstances surrounding that late submission should not argue against the acceptance of that material. Those conditions were satisfied here, and both parties even agreed on the fact that RB had been given the opportunity to comment on that late evidence.
RB's appeal was therefore dismissed.
The third appeal (Reference T-328/16), filed by IP was driven by his wish to exclude the remaining goods in class 9 from registration. It was based on two grounds.
Firstly, IP argued that the Court failed to follow the English case of Lego System Aktieselskab v Lego M Lemelstrich Ltd  FSR 155 where the High Court underlined that the existence or absence of a common field of activity between the parties was not the acid test for establishing a likelihood of misrepresentation.
The General Court underlined that while the existence of a common field of activity was not a condition for finding a likelihood of confusion, it still had relevance in the assessment. The Court agreed with the Board of Appeal's finding that there was no reasonable extension of misrepresentation to the computer-related goods in the absence of evidence of sales by IP.
Secondly, IP argued the Board of Appeal had failed to take into account that RB intended to deceive the public. The Court pointed out that this argument had only been raised very briefly by IP, without any evidence in support of that claim. Additionally, RB was known to be a former member of the band, and thus associated with Deep Purple in the eyes of the public, which went against a finding of deception to the public.
The appeal was therefore dismissed.
Those cases highlight that famous artists or the owners of well-known brands should not assume that their goodwill extends to an unlimited range of goods and services and rely on their extensive reputation only: broad and well drafted trade mark registrations remain an essential tool to protect their names.
Case ref: T-344/16 – T-345/16 and T-328/16
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