EU recap: Ruling of the Court of Justice of the European Union on the possibility of consumers being misled (Mille Miglia vs e-miglia)
Recap from the K&L Gates publication Trademarks and Unfair Competition, Quarterly Bulletin, 1/2017 – click here.
On 17 February 2011, the company Rebel Media Ltd applied to the European Union Intellectual Property Office for the registration of a community trademark for the following graphic designation:
for goods and services in classes 12 (vehicles, land, air and water transport devices), 14 (including precious metals and alloys thereof, jewellery, gemstones), 18 (including leather, imitation leather and products from such materials), 25 (clothing, footwear, headwear), 35 (including advertising, in particular of electric vehicles, organization of advertising events) and 41 (education, training, recreation, sports and cultural events) of the Nice Classification.
On 16 September 2011, the company Automobile Club di Brescia lodged an opposition to the registration of the above mark in respect of all of the goods and services submitted.
Automobile Club di Brescia’s opposition was based on the following three earlier word trademarks:
- MILLE MIGLIA (trademark EUTM 1519511) registered for services from class 41 of the Nice Classification (including services connected with entertainment; entertainment services in the form of games, interactive games, video games);
- MILLE MIGLIA (trademark EUTM 8299448) registered for selected goods in classes 12, 18 and 25 of the Nice Classification;
- MILLE MIGLIA (trademark EUTM 9543265) registered for selected goods from class 14 of the Nice Classification and services from class 35 of the Nice Classification (including organizing and conducting fairs, exhibitions for commercial or advertising purposes, retail trade services, and services provided online, including in respect of such goods as land vehicles and their accessories and parts, bicycles, jewellery and gemstones).
Automobile Club di Brescia based its opposition on the relative basis for refusing to register set out in Article 8 (1) (b) of Council Regulation (EC) No. 207/2009 of 26 February 2009 on the community trademark, in accordance with which a trademark is not registered if, because of its identity with, or similarity to, an earlier trademark and the identity or similarity of the goods or services covered by the trademarks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trademark is protected; the likelihood of confusion includes the likelihood of association with the earlier trademark.
The Board of Appeal found that the likelihood of confusion exists in the case of persons who do not understand either the combination of words “mille miglia” or the element “miglia”, but only in relation to goods and services deemed identical. For this reason, the Board of Appeal upheld the opposition for goods belonging to classes 12, 14, 18 and 25 – in relation to which Rebel Media Ltd. had applied for the registration of the trademark – and for services involving the “organization and arrangement of advertising events” belonging to class 35 and “entertainment” from class 41 covered by the trademark submitted. Yet, the Board of Appeal overturned the decision of the Opposition Division and dismissed the opposition in respect of the other services belonging to classes 35 and 41 covered by the trademark submitted.
On 30 November 2016, the EU General Court admitted (T-458/15) that the Opposition Division had not erred in its assessment of the similarity of the marks. The EU General Court confirmed that the marks are similar to each other visually to a low degree and phonetically to a below-average degree. Consequently, the EU General Court dismissed the appeals raised in the case by each of the sides.
By: Ewelina Madej