IPKM expert lecture by Thomas Frydendahl (EUIPO Boards of Appeal) on the unitary character of EU trade marks

Abstract

In the context of Art. 8(1)(b) EUTMR, the CJEU has found that the more distinctive the earlier mark, the greater will be the likelihood of confusion (C-251/95, ‘SABEL’, §§ 23-24) and, conversely, that where marks coincide in an element that is weakly distinctive or descriptive, this will not often lead to a likelihood of confusion (C-705/17, ‘HANSSON’, § 55).

However, Art. 1(2) EUTMR, establishes a unitary character for EU trademarks. The CJEU has interpreted this to mean, that – in administrative proceedings - an EUTM can be successfully relied on against another EUTM if the former would be adversely affected only in part of the Union (C-514/06P, ‘ARMACELL’, § 57).

So how can these staples of case-law be reconciled in a territory with an extreme degree of lingual diversity such as the European union? Where a single term maybe descriptive in some parts of the EU, but not in others?

To explore this question, a closer look will be taken of the EUIPO Boards of Appeal decision R 1062/2020-1, which regarded an opposition against the contested sign based on an earlier mark, both of which regarded a range of identical or similar yoga-related services.

Speaker's profile

Thomas Frydendahl is a litigator at the EUIPO Boards of Appeal, representing the Board when its decisions are appealed to the General Court of the European Union Court of Justice. He is also a Member of the Norwegian Boards of Appeal (KFIR) which take decisions on appeals in IP matters. Thomas has experience both from private practice, advising everything from start-ups and global conglomerates in matters relating to IP law and from the public sector as a decision taker both in the Danish Patent-and trademark Office and the EUIPO. He has been a frequent lecturer for lawyers in the Nordic countries and has given several lectures at international conferences on topics related to European trademark law. He is also an Accredited Mediator.