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This is an informal case summary prepared for the purposes of facilitating exchange during the 2025 WIPO IP Judges Forum.

Session 3: Well-Known Trademarks

General Court of the European Union [2021]: JT v European Union Intellectual Property Office (EUIPO), Case No. T 197/20

Date of judgment: July 14, 2021

Issuing authority: General Court of the European Union

Level of the issuing authority: First and final instance

Type of procedure: Judicial (Administrative)

Subject matter: Trademarks

Plaintiff: JT

Defendant: European Union Intellectual Property Office (EUIPO)

Keywords: EU trademark – Opposition proceedings – Application for the EU figurative trademark QUILAPAYÚN – Relative ground for refusal – No well-known trademark within the meaning of Article 6bis of the Paris Convention – Article 8(2)(c) of Regulation (EC) No 207/2009 (now Article 8(2)(c) of Regulation (EU) 2017/1001)

Basic facts: On September 16, 2010, M. Eduardo Carrasco Pirard and seven other individuals (the interveners) filed an application with the European Union Intellectual Property Office (EUIPO) to register the following figurative sign for goods and services in Classes 9 and 41 of the Nice Classification:

On December 27, 2010, JT (the plaintiff) filed a notice of opposition to the registration of the trademark applied for in respect of the aforementioned goods and services. The opposition was notably based on the identical figurative unregistered trademark, which was alleged to be well-known for the service “music group” in Class 41 of the Nice Classification.

On December 2, 2013, the Opposition Division determined that the plaintiff had provided sufficient evidence proving that the earlier unregistered trademark was well-known in the European Union, especially in Spain, as the name of a music group. As the signs at issue are identical, it was found that a likelihood of confusion existed for certain (similar) products and services. The Opposition Division thus partially upheld the plaintiff’s opposition.

The interveners filed a notice of appeal with EUIPO against the decision of the Opposition Division.

On March 13, 2015, the Second Board of Appeal annulled the Opposition Division’s decision and rejected the plaintiff’s opposition in its entirety. It notably held that the plaintiff had not proved that he was the ‘genuine proprietor’ of the earlier well-known trademark. Moreover, the ownership of that trademark was also claimed by the trademark applicants (the interveners). The Second Board of Appeal added that it had no jurisdiction to determine the ownership of the earlier well-known trademark, since that question is a matter for the national court having jurisdiction.

The plaintiff brought an action against the Second Board of Appeal’s decision before the General Court.

By its judgment, dated December 11, 2017, in case T-249/15, the General Court annulled the decision of the Second Board of Appeal. It notably held that it is not apparent from any provision that the opponent who brings opposition proceedings under Article 8(2)(c) of Regulation No 207/2009 [now Article 8(2)(c) of Regulation No 20171001] must prove that he is the ‘exclusive’ proprietor of the earlier well-known unregistered trademark on which he bases his opposition. Moreover, if an earlier trademark and/or an earlier right has more than one proprietor (co-ownership), the opposition may be filed by any or all of them, which allows each of the co-owners of an earlier trademark to oppose the registration of a trademark that is applied for.

Further to that annulment by the General Court, the Fourth Board of Appeal adopted a new decision, on February 10, 2020, annulling the Opposition Division’s decision. In essence, the Fourth Board of Appeal found that the opposition filed by the plaintiff could not be upheld due to the lack of sufficient evidence of the well-known character of the earlier unregistered trademark.

The plaintiff, JT, sought to annul the decision of the Fourth Board of Appeal before the General Court (case T-197/20).

Held: The General Court dismissed the action on the grounds that there was no well-known trademark within the meaning of Article 6bis of the Paris Convention, and ordered JT to pay the costs.

Relevant holdings in relation to Well-Known Trademarks: It is clear from Article 6bis(1) of the Paris Convention that well-known trademarks within the meaning of that provision are trademarks which, on the basis of their reputation in the territorial area at issue and irrespective of whether proof of registration is provided, enjoy protection against a likelihood of confusion.

Since Article 8(2)(c) of Regulation No 207/2009 [now Article 8(2)(c) of Regulation No 20171001] refers to trademarks which are ‘well known in a Member State, in the sense in which the words “well known” are used in Article 6bis of the Paris Convention’ it is necessary, in order to ascertain how the existence of a well-known trademark can be proved, to refer to the guidelines for the interpretation of Article 6bis (i.e. Article 2 of the joint recommendation concerning the provisions on the protection of well-known trademarks, adopted by the Assembly of the Paris Union and the General Assembly of the World Intellectual Property Organisation (WIPO) at the 34^th series of meetings of assemblies of the Member States of the WIPO of 20 to 29 September 1999).

Under Article 2 of the joint recommendation, in determining whether a trademark is a well-known trademark within the meaning of the Paris Convention, the competent authority can take into account any circumstances from which it may be inferred that the trademark is well known, including: the degree of knowledge or recognition of the trademark in the relevant sector of the public; the duration, extent and geographical area of any use of the trademark; the duration, extent and geographical area of any promotion of the trademark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods or services to which the trademark applies; the duration and geographical area of any registrations, and/or any applications for registration, of the trademark, to the extent to which they reflect use or recognition of the trademark; the record of successful enforcement of rights in the trademark, in particular, the extent to which the trademark has been recognised as well known by competent authorities; the value associated with the trademark.

Article 2(1)(c) of the joint recommendation states that the factors listed in the previous paragraph are ‘guidelines to assist the competent authority in determining whether the trademark is a well-known trademark [and] are not pre-conditions for reaching that determination’, that ‘the determination in each case will depend upon the particular circumstances of that case’, that, ‘in some cases all of the factors may be relevant’, that, ‘in still other cases, none of the factors may be relevant and the decision may be based on additional factors that are not listed [in the previous paragraph]’ and that ‘such additional factors may be relevant, alone, or in combination with one or more of the factors listed [in the previous paragraph]’.

Furthermore, since the Court of Justice has held, in the judgment of 22 November 2007, Nieto Nuño (C‑328/06, EU:C:2007:704, paragraph 17), that well-known status is a kindred concept to that of reputation, regard must be had to the assessment criteria laid down by the Court of Justice for reputation, a concept which is referred to in Article 8(5) of Regulation No 207/2009 [now Article 8(5) of Regulation No 2017/1001].

In that regard, it must be inferred from the judgment of 14 September 1999, General Motors (C‑375/97, EU:C:1999:408), that a trademark cannot be required to be known by a given percentage of the defined public. In examining the degree of knowledge required in respect of a well-known trademark or a trademark which has acquired a reputation, all the relevant facts of the case must be taken into consideration, in particular the market share held by the trademark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it. Furthermore, a trademark cannot be required to have a reputation or well-known status ‘throughout’ the territory of the Member State. It is sufficient for it to exist in a substantial part of it.

As regards the definition of the relevant public, according to the case-law, the public amongst which an earlier trademark must have acquired a reputation is that concerned by that trademark, that is to say, depending on the product or service marketed, either the public at large or a more specialised public, for example traders in a specific sector. That case-law, which relates to the notion of reputation, is also applicable to the kindred notion of well-known status.

In the present case, the plaintiff argued that the Fourth Board of Appeal had no standing to examine, of its own motion, the evidence provided before the Opposition Division to establish the well-known character of the earlier unregistered trademark. The General Court rejected that argument, holding that establishing the well-known character of the earlier trademark referred to in Article 8(2)(c) of Regulation No 207/2009 is a question of law necessary to ensure the correct application of that regulation. Therefore, the Board of Appeal was required to examine the evidence demonstrating the existence of the earlier trademark’s well-known character within the meaning of Article 6bis of the Paris Convention on which the opposition was based, even if that character had not been contested by the parties.

Regarding the establishment of the well-known character of an earlier unregistered trademark, the General Court recalled that:

-       the public’s degree of knowledge of a well-known trademark is higher than for a trademark that has a reputation, with the result that the standard of proof required in order to establish that a trademark is ‘well known’ for the purposes of Article 6bis of the Paris Convention is higher than that applicable to trademarks that have a reputation within the meaning of Article 8(5) of Regulation No 207/2009. The purpose of that provision is to provide special protection for well-known trademarks against exploitation in countries in which they are not yet registered. It is not surprising therefore if the requirement of being well known imposes a relatively high standard for a trademark to benefit from such exceptional protection; and

-       while it cannot be ruled out that an ‘historical’ trademark might still enjoy a certain residual notoriety, it should be recalled that the well-known character of an earlier trademark, within the meaning of Article 6bis of the Paris Convention, cannot be assumed on the basis of fragmentary and insufficient evidence.

More specifically, regarding the evidence provided by the plaintiff to establish the well-known character of the earlier unregistered trademark at issue, the General Court notably held that:

-       the numerous press articles pertaining to the music group’s history and concerts were published in Chile and are thus not directly relevant to establish the degree of knowledge of the trademark in the European Union; this is also true for the other evidence provided which do not pertain to Member States of the European Union;

-       the press articles provided that were published in Spain and in other EU Member States give a certain indication of the recognition of the music group Quilapayún; however, these articles aim at promoting concerts of that music group and are not supported by any objective information pertaining to the number of spectators at these concerts, the proceeds generated by the latter, the discs sold or by opinion polls on the recognition of the earlier trademark. It follows that these press articles are insufficient to demonstrate the earlier trademark’s alleged well-known character;

-       the contract concluded with a Spanish record company, for 15 albums, shows the existence of commercial relations with such economic operators, but does not contain any information on the degree of recognition of the earlier trademark in Spain;

-       the invoked decision of the Spanish patent and trademark office (Oficina Española de Patentes y Marcas), which refused the registration of an international trademark application on the grounds that the name Quilapayún was known in Spain for a music group, is not as such relevant since that decision (i) was based on a specific legal provision protecting inter alia names, pseudonyms or any other designation of a person and (ii) did not conclude that the earlier trademark was well-known within the meaning of Article 6bis of the Paris Convention; and

-       the fact that identical national trademarks have been registered is insufficient to evidence the well-known character of an earlier unregistered trademark.

Relevant legislation: Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trademark