EU court dismisses Bacardi trademark appeal

The EU General Court today dismissed a trademark appeal by spirits company Bacardi in a dispute relating to a non-registered mark.

In June 2009, Bacardi filed an application at the European Union Intellectual Property Office for a figurative sign made up of the number ‘42’ and the word ‘Below’ running vertically underneath it.

Bacardi cited goods in class 33 including alcoholic beverages (except beers) such as vodka.

The following year, in March 2010, Czech Republic-based spirits company Palírna U Zeleného stromu opposed the application based on its non-registered mark used in the Czech Republic and Slovakia for “alcoholic beverages, namely, vodka”.

Palírna’s non-registered mark consists of the number ‘42’ with the word ‘Vodka’ running vertically below.

The owner of a non-registered mark may oppose an EU trademark if it meets four requirements.

First, a non-registered mark must be used in the course of trade and, second, it must be of more than mere local significance.

In addition, the non-registered mark must have been acquired in accordance with EU law or the law of the member state in which it was used before the contested trademark application was made.

Finally, it must “confer on its proprietor the right to prohibit the use of the subsequent trademark”.   

After the EUIPO’s Opposition Division rejected Palírna’s opposition in August 2011, the EUIPO’s Second Board of Appeal, in 2012, upheld an appeal made by the company.

According to the board, the non-registered mark had acquired rights through its use for “alcoholic beverages, namely, vodka” before the applied-for trademark was filed.

In addition, the board said that the goods in question were identical or highly similar and that there was a likelihood of confusion between the marks at issue.

Following Bacardi’s complaint at the General Court, the EUIPO argued that Bacardi’s request for annulment of the decision is inadmissible on the grounds that the company did not develop any argument or explain with sufficient clarity why the board’s assessment was incorrect.

Bacardi argued that it did in fact provide sufficient explanations. According to Bacardi, it demonstrated that, under Czech law, the board should have required Palírna to provide further evidence to establish continuous use of the non-registered mark up to the date on which the Opposition Division gave its decision in August 2011.

Bacardi argued before the General Court that the board had incorrectly summarised the arguments that the company relied on before the Opposition Division and the Board of Appeal.  

However, the General Court agreed with the EUIPO and Palírna that Bacardi’s argument was “unfounded”.

The General Court ruled today that the board gave a “detailed summary of the arguments” relied on by Bacardi before the Opposition Division and correctly summarised all the arguments put forward.

The General Court also rejected Bacardi’s argument that the board infringed article 8(4) of Regulation No. 207/2009, which gives the owner of a non-registered mark the power to prevent the registration of a later trademark.

Bacardi’s appeal was dismissed by the General Court and the company was ordered to bear the costs.