In case T-480/12 Coca-Cola v OHMI, Mitico had filed an application for CTM for goods in Classes 29, 30 and 32

The Coca-Cola Company (‘Coca-Cola’)  filed a notice of opposition on the basis of the four earlier CTM’s which respectively covered goods and services in: (i) Classes 30, 32 and 33; (ii) Class 32; (iii) Classes 32 and 43; and (iv) Classes 32 and 33.

The opposition was also based on the following earlier United Kingdom figurative mark C registered for goods in Class 32 corresponding to the following description: ‘Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’

Both the Opposition Division and Board of Appeal rejected the opposition based on Article 8(1)(b) of CTMR which arguments can be summarized as below:

The relevant consumer is an ordinary member of the general public of the EU. It was not challenged that the goods covered by the marks at issue are identical. There is no likelihood of confusion between the signs at issues: although Coca-Cola was the proprietor of a range of highly famous and well-known Coca-Cola trade marks whose reputation was connected to their depiction in Spenserian script, that did not mean that it was the proprietor of that — undeniably elegant — script, which was freely available to be used by all.

 Next, although the goods were identical and the earlier trade marks had an undeniable reputation, it was difficult to see why a consumer would confuse the word ‘master’, combined with an Arabic word, with the earlier trade marks containing the words ‘coca-cola’ when there was no point of overlap textually. According to the BoA, there was nothing tangible in the earlier signs which was reproduced in the sign applied for, apart from the ‘tail’ element of each sign, flowing from the base of the letters ‘c’ and ‘m’ respectively.

However, the Board added that that element on its own, divorced from the main Coca-Cola context, was not sufficient to generate any degree of similarity between the signs, as the evidence did not show that consumers focused on that detail when it was divorced from that context. In addition, the Board held that the Spenserian script was not highly fanciful — despite its tails, flourishes and other embellishments — and not so distinctive that its appearance in trade marks other than those owned by Coca-Cola would give rise to any suspicion that those marks had the same commercial origin.

 Lastly, it dismissed Coca-Cola’s assertion that, in practice, Mitico was supplying products bearing labels mimicking those to be found on Coca-Cola’s products, on the ground that the relevant question in the case before it was whether the mark as applied for was confusingly similar to the earlier trade marks as registered, and the way in which the trade marks might be used in practice was irrelevant for the purposes of that assessment.

Next, with regard to the ground of opposition based on Article 8(5) CTMR, the BoA began by stating that the first precondition for the application of that ground — namely, the existence of a link between the mark applied for and the earlier trade mark — was not satisfied, since the marks had not been found to be similar when analysed in relation to the ground of opposition alleging a likelihood of confusion.

 In that connection, regardless of the strength of the earlier trade marks’ reputation, the types of injury referred to by that ground were the consequence of a certain degree of similarity between the mark applied for and the earlier trade mark, by virtue of which the public concerned made a connection between them, that is to say, established a link between them. According to the Board of Appeal, that was not the position in the case before it, since there was no similarity between the marks at issue.

The General Court annulled the contested decision.

During the opposition proceedings, Coca-Cola had provided evidence relating to Mitico’s commercial use of the mark in respect of which registration was sought. That evidence included a witness statement by L. Ritchie, Coca-Cola’s lawyer, dated 23 February 2011, to which she appended screen shots of Mitico’s website, www.mastercola.com, printed on 16 February 2011. Those screen shots were intended to show that Mitico was using the mark applied for in the course of trade in the form shown below:

The Board of Appeal stated that, if, on the basis of that evidence, it were proved to be true that Mitico had ‘deliberately adopted the same get-up, imagery, stylisation and font and packaging’ as Coca-Cola, then the latter ‘could reasonably argue that [Mitico] intended to illegitimately take advantage of the repute of the earlier trade marks. However, it could not do so in the context of the specific provision of Article 8(5) [of Regulation No 207/2009], which must only take into account [Mitico]’s mark for which registration is sought’.

The GC held that the above assessment by the BoA  departed from the  governing case-law, pursuant to which, in essence, a finding of a risk of free-riding made on the basis of Article 8(5) of CTMR may be established, in particular, on the basis of logical deductions resulting from an analysis of the probabilities and by taking account of the usual practices in the relevant commercial sector as well as all the other circumstances of the case, including the use, by the proprietor of the mark applied for, of packaging similar to that of the goods of the proprietor of the earlier trade marks.

As it is, the evidence relating to the commercial use of the mark applied for, as produced by Coca-Cola during the opposition proceedings, manifestly constitutes relevant evidence for the purposes of establishing such a risk of free-riding in the present case.

It must therefore be found that the Board of Appeal erred in disregarding that evidence when applying Article 8(5) of CTMR in this case.  That finding cannot be undermined by OHIM’s assertion that it was possible for Coca-Cola to make use of that evidence in the context of infringement proceedings based on Article 9(1)(c) of Regulation No 207/2009. That assertion disregards the scheme of that regulation and the purpose of opposition proceedings established in Article 8 thereof, which is to ensure, for reasons of legal certainty and sound administration, that trade marks whose use could successfully be challenged downstream before the courts are not registered.

      However, since the question whether unfair advantage would be taken of the distinctive character or the repute of the earlier trade marks was not examined by the Board of Appeal, it is not for the Court to give a ruling on it, for the first time, in its review of the legality of the contested decision. Therefore the Court remanded the case to the Boards.