A new article by the MARQUES Unfair Competition Team reviews two recent decisions of the EU General Court: Zara (T-467/20) and Chanel (T-44/20).

The article is published as part of the Team’s “Carousel of Fame” project, which covers Article 8(5) of the EUTM Regulation and the taking unfair advantage of famous marks.

The Zara case concerned an opposition filed against Inditex’s EUTM application for ZARA for goods and services in classes 29 to 32, 35 and 43. The decision shows that any claim that the contested mark has acquired reputation through its use, where such use as a fact precedes the filing of the contested mark, is not taken into account and is therefore considered irrelevant.

The article discusses how this approach compares to cases involving applications for the names of famous people or celebrities.

The Chanel case, which concerned Huawei’s EUTM application for a figurative sign for two interlocking elements in class 9, sheds light on how the existence of the required link between two signs must be assessed, when an opposition is based on the claimed reputation of an earlier mark.

The Court said that the comparison between the signs must be based solely on the form under which the earlier sign has been registered, not taking into consideration potential alterations (e.g. rotation) made in the context of its use in commerce.

You can read the article, which is written by Team member Stefanos Tsimikalis of Tsimikalis Kalonarou Law Firm, on the Team’s page, where you can also find other publications in the Carousel of Fame project (MARQUES log-in required).