Background

Burlington Fashion GmbH, filed applications to register the word mark BURLINGTON and the following marks:

The applications covered goods in class 3 (such as soaps), class 14 (jewellery and watches), class 18 (leather bags and so on) and class 25 (footwear, clothing and headgear).

These applications were opposed by the owners of the Burlington Arcade who were the proprietor of various earlier marks for BURLINGTON and BURLINGTON ARCADE in, amongst others, class 35. These registrations broadly cover retail services, for example, the bringing together for the benefit of others, a variety of goods enabling customers to conveniently view and purchase those goods from a range of general merchandise retail stores. The Burlington Arcade’s most relevant earlier marks date from 2003.

The opposition was brought on the basis of Article 8(1)(b), 8(4) and 8(5) of the EUTMR.

Initially, the opposition division upheld the oppositions, but these decisions were then overturned by the Board of Appeal which rejected the oppositions.

The Burlington Arcade appealed to the General Court, but the appeal was dismissed and the decisions of the Board of Appeal were upheld.

Finally, the Burlington Arcade appealed to the CJEU.

Decision of the CJEU

The CJEU overturned the decision of the General Court (and the earlier decisions of the Board of Appeal) for two key reasons:

1. One of the main grounds on which the General Court had rejected the opposition was because the Burlington Arcade had provided no proof that unfair advantage had been taken of its earlier registrations. In particular the General Court concluded that there was no evidence that the “attractiveness” of the earlier BURLINGTON registrations would be reduced. This finding was overturned by the CJEU which held that the General Court’s discussions about “commercial attractiveness” were ambiguous because this was not a concept which was discussed in Article 8(5). It essentially seems that the General Court had applied the wrong test to the assessment of unfair advantage. The CJEU considered that it was also not clear that the General Court had considered detriment to distinctive character (and should have done so); and
2. The General Court also considered that the goods covered by the applications such as watches, jewellery and clothing were different from the retail services covered by the Burlington Arcade’s earlier registrations, because the retail services in the latter were not precisely identified, that is, the specification did not state which goods the retail services related to (in line with the Praktiker case). The CJEU pointed out that the Burlington Arcade’s earlier registrations were registered before the Praktiker decision, so the decision was not relevant to these registrations. As a result, the General Court should not have simply dismissed the opposition under Article 8(1)(b) outright because the retail services did not specify the goods to which they relate. Instead, the General Court should have looked at what goods the retail services had been used for and should have then assessed whether these services were similar to the goods covered by the applications.

As a result of the above, the original decisions of the Opposition Division rejecting the applications stand.

In short

This decision brings some welcome clarity to the scope of unfair advantage under Article 8(5) and serves as a reminder that detriment to distinctive character should also be assessed in some detail.

Case details at a glance

Jurisdiction: European Union
Decision level: Court of Justice of the EU
Parties: Tulliallan Burlington Ltd v EUIPO
Date: 04 March 2020
Citation: C-155/18 P to C-158/18 P