Unregistered rights – poor relation or useful addition?
A number of our Autumn Conference speakers shared how unregistered rights could be used successfully in opposition proceedings.
Here is a summary of a few of the highlights from the Conference.
Ese Akpogheneta, from Nucleus IP, discussed the Deep Purple EU case. One of the band members, who had left the group, registered the EU trade mark ‘Deep Purple’.
The rest of the band filed opposition. They were able to show turnover figures, ticket sales, press cuttings and they put together a good coherent opposition argument.
Ese explained that good-will had been built up in relation to the band rather than the individual who had left, and the band was able to demonstrate this.
The EUIPO found that there was good-will in the name. If the applicant was advertising a ‘Deep Purple’ gig, they would assume that it is the whole band coming and people would buy tickets on that basis.
“It is an interesting case to look at if you are ever before the EUIPO with a passing off case in terms of how to put your evidence together and to see what the EUIPO is looking for,” Ese concluded.
The case is now being appealed to the CJEU.
Poor relation or useful addition?
Peter Brownlow, from Bird & Bird, used his talk to provide a European perceptive on unregistered rights. He hoped that his talk “helped promote the perception of unregistered trade mark rights from being the poor relation to being a useful addition to a rights holder’s armoury.”
He concluded that he “hopes to see more use of these rights, which can be quite strong and quite useful in oppositions and cancellation actions before the EUIPO.”
Regional pizza wars
Browne Jaconson’s Bonita Trimmer, in her talk, discussed the interesting case of Caspian Pizza in the English midlands – Birmingham and Worcester specifically.
Two rivals – (Worcester) Caspian Pizza and (Birmingham) Caspian Pizza both had businesses. Birmingham registered the word and figurative trade marks for Caspian Pizza in 2005 and then claimed infringement against Worcester.
However, Worcester had defence against infringement proceedings because of its goodwill in Worcester, somewhere the Birmingham Caspian Pizza had never traded, prior to the registered trade mark in 2005.
This is despite Birmingham Caspian Pizza having started trading first (1991) – some 11 years prior to Worcester (2002).
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Our Autumn Conference explored EU oppositions from all angles - whether they are based on registered or unregistered rights or geographical indications.