British Hairways didn’t take off – as a commerce mark

by admin


The puns of hair salons are legendhairy. Names like Shear Lock Combs, Julius Scissor and Hairport are simply the tip of the iceberg. However what occurs when the pun consists of a widely known commerce mark? Can the proprietor of the well-known mark efficiently oppose an software for a parodic signal? This query is explored by the German Patent Court docket in a lately printed determination (case 30 W (pat) 15/19).

Background

A personal particular person utilized for German commerce mark British Hairways protecting ‘hair salon companies’ at school 44. British Airways filed an opposition on the premise of its EU commerce mark no. 6561534, registered inter alia for ‘airline companies’ at school 39. The German Patent and Commerce Mark Workplace rejected the opposition. British Airways appealed to the German Patent Court docket.

The German Patent Court docket’s determination

The German Patent Court docket upheld the attraction and cancelled the British Hairways commerce mark.

Whereas there is no such thing as a chance of confusion between the marks on condition that the companies are dissimilar, the judges accepted that British Hairways takes unfair benefit of the distinctiveness of with out due trigger and throughout the that means of Sec. 9(1)(c) German Commerce Mark Act.

The sooner mark enjoys a fame within the EU. The Court docket thought-about it to be a widely known indisputable fact that ‘British Airways’ has been the title of one of many largest airways on the planet for many years. It provides connections all through Europe, together with Germany, and its planes are branded ‘BRITISH AIRWAYS’. The sooner mark is deemed to get pleasure from a really excessive fame for ‘airline companies’.

The German Patent Court docket accepted that the related public establishes a hyperlink between the commerce marks, which is a crucial situation for an infringement of a commerce mark with a fame. Whereas the related companies could also be dissimilar, the excessive similarity of the indicators and the very excessive fame loved by the sooner mark will lead shoppers to ascertain a hyperlink.

The judges discovered that British Hairways takes unfair benefit of the mark. The previous rides on the coattails of the latter and advantages from the eye the mark receives. The proprietor of the contested mark even confirmed in her submissions that she selected the mark as a result of the signal is more likely to entice extra clients.

The German Patent Court docket additionally held that the benefit taken of the distinctiveness of the sooner mark is unfair. Unfairness is, in precept, presumed. The proprietor of the later mark argued that there’s a customized within the related sector to incorporate puns within the names of hair salons. The judges accepted that there’s a customized to incorporate the phrase ‘hair’ or the German equal within the names of hair salons in a humorous manner. Nonetheless, this doesn’t, mentioned the Court docket, justify profiting from the sooner mark. First, the customized doesn’t embody making enjoyable of well-known commerce marks. Fairly, widespread phrases or names are used, equivalent to ‘CutHairIna’, ‘SaHairA’ or ‘CHairisma’. Additional, there was no obvious want for the proprietor of the contested mark to misappropriate the well-known earlier mark.

The judges additionally denied ‘due trigger’. Assessing this criterion requires balancing the events’ pursuits. British Airways might invoke the proper to safety of its mental property (Artwork. 17(2) EU Constitution of Elementary Rights (‘CFR’)). The proprietor of the later mark might depend on the proper to freedom of expression (Artwork. 11(1) CFR) and the liberty of the humanities (Artwork. 13 CFR).

The liberty of the humanities additionally covers the parody of well-known commerce marks or merchandise. The German Patent Court docket accepted that ‘British Hairways’ constitutes a humorous play on ‘BRITISH AIRWAYS’ and is protected as a parody by Artwork. 13 CFR. Nonetheless, British Airways’ mental property rights prevailed within the balancing train. Based on the judges, the opposition proceedings solely involved the cancellation of the commerce mark ‘British Hairways’ however not its use. It’s unreasonable to grant the proprietor of the contested mark a everlasting, unique registered proper to an indication, no matter the best way it’s used, which takes benefit of a commerce mark with a really sturdy fame. Moreover, the unique proper to the later mark could be transferred and licensed. Additionally, the existence and the fame of the sooner mark enabled the contested mark to make sense within the first place.

British Airways’ mental property proper additionally trumped the liberty of expression of the proprietor of the later mark. It’s not obvious, in response to the judges, that the proprietor of the later mark supposed to criticise the airline service of British Airways. The Court docket, subsequently, questioned whether or not Artwork. 11(1) CFR could be affected in any respect. In any occasion, the proprietor of a widely known commerce mark doesn’t have to just accept registration of an infringing mark.

Remark

On the subject of the parody of (normally well-known) commerce marks, German courts seem to differentiate between registering the parody as a commerce mark and its use. The German Supreme Court docket’s judgment Springender Pudel (‘Leaping Poodle’, summarized right here) means that it’s simpler to assault the registration of a parody efficiently than using it. To this point, choices on whether or not the parodic use of a commerce mark could be justified by the liberty of expression or the liberty of the humanities are uncommon. In a latest determination of the Italian Supreme Court docket (mentioned right here), the Justices held {that a} parody is perhaps commerce mark infringing. The Benelux Court docket of Justice concluded in a 2019 determination (mentioned right here) that the inventive use of a commerce mark is lawful, the place the inventive expression is the unique results of a inventive design course of, which doesn’t intention to hurt the commerce mark or the commerce mark holder.

On this Kat’s opinion, the rights to freedom of expression and freedom of the humanities ought to take a backseat to the mental property proper of a (well-known) commerce mark.

Whereas it’s actually optimistic to have a commerce mark parody faraway from the register, its use is way more aggravating. Shoppers don’t normally see what marks are registered however they encounter commerce marks in actuality and base business choices on them. The influence of the use on the well-known commerce mark is way more extreme than its mere registration.

Alternatively, prohibiting using a parody can curtail the liberty of the humanities and the liberty of expression. Nonetheless, the prohibition solely pertains to ‘use in the midst of commerce’, i.e. business use. Non-commercial makes use of stay potential. On this Kat’s opinion, this strikes a good stability between the events’ pursuits.



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