Sequel not expected
Gavin Stenton feels the end credits may have rolled for a cinema chain’s EUTM application. B 3 066 201, Odeon Cineplex SRL v Odeon Cinemas Holdings Ltd, EUIPO, 29th November 2019
In May 2018, leading UK cinema chain Odeon Cinemas Holdings Ltd (Odeon UK) filed an EU trade mark application for a figurative mark covering a range of goods and services in classes 9, 16, 41 and 43. A comparatively small Romanian film distributor, Odeon Cineplex SRL (Odeon Romania), relying on a senior Romanian trade mark registration for ODEON in classes 9, 35 and 41, subsequently opposed Odeon UK’s application, alleging: (i) a likelihood of confusion; and/or (ii) unfair advantage/detriment to the reputation of its senior registration, under Articles 8(1)(b) and 8(5) EUTMR respectively.
On 29th November 2019, the Opposition Division (OD) partially upheld Odeon Romania’s opposition in respect of Odeon UK’s core cinematic goods and services in classes 9 and 41. Absent any evidence of reputation being filed by Odeon Romania, the OD rejected the claim under Article 8(5) and proceeded to assess the opposition exclusively under Article 8(1)(b).
In doing so, the OD concluded that there was no overlap or similarity in terms of the class 16 (paper and printed) goods and class 43 (food and drink) services covered by Odeon UK’s application, but that the vast majority of the class 9 goods and class 41 services (in particular those of a cinematic nature) covered by Odeon UK’s application were either identical or similar to those covered by Odeon Romania’s senior registration.
Comparing the respective marks through the eyes of the relevant Romanian consumer, the OD concluded that the marks were visually, aurally and conceptually “highly similar”, the ‘LUXE’ element being likely to be perceived as a misspelling of the Romanian word for “luxury” (“lux”), and therefore descriptive of the quality of the goods and services. It was thus non-distinctive and of no distinguishing effect, particularly given its smaller size and subordinate position within Odeon UK’s mark.
Having found that certain goods and services were identical or similar, and that the marks were highly similar, the OD held that it was “highly conceivable that the relevant consumer will perceive [Odeon UK’s mark] as a sub-brand [or] variation of [Odeon Romania’s] earlier mark, configured in a different way according to the type or range of goods or services that it designates”. Accordingly, the opposition was upheld in respect of all the identical and similar class 9 goods and class 41 services.
Given the limited prospects of successfully appealing the decision and Odeon UK’s apparent lack of senior rights in Romania, a sequel seems unlikely under the circumstances. Instead, Odeon UK may be considering coexistence terms, or alternatively (to the extent that Romania is not a target market) converting its EUTM application into a series of national applications.
Key points
- This decision highlights the risks that even established domestic brands face when seeking geographic expansion
- The decision also underlines the unitary nature of EUTMs and the fact that a senior right in a single Member State is sufficient to prevent registration as an EUTM