Litigation Victory for the Royal Shakespeare Company
By Osborne Clarke
The recent decision of the General Court of Justice of the European Union confirmed victory for the Royal Shakespeare Company after its lengthy battle with Austrian company Jackson International Trading Co. In 2003 Jackson registered a community trade mark which was later subject to examination due to an application for a declaration of invalidity submitted by the Royal Shakespeare Company.
Under Art. 8(5) various conditions must be met in order for a trade mark to invalidate a later one. Firstly, the trade mark in question must be registered and both marks must be identical or similar. The mark must have reputation within the EU or member state depending on whether it’s a community or national trade mark. Finally, the court must conclude that if the second mark were to be used without due cause there would be a risk that there would be an unfair advantage or that it may be detrimental to the distinctive nature of the initial trade mark.
There were numerous grounds cited on the application for a declaration of invalidity including the submission that the CTM would deceive the public, the use of the CTM would be damaging to the reputation of the Royal Shakespeare Company and that the law in England and Wales would prohibit use of the second mark under the laws of passing off.
Although the Cancellation Division originally rejected the application, the Royal Shakespeare Company went on to appeal to the Board of Appeal of OHIM who found in their favour and declared in the CTM to be invalid. Jackson based their subsequent appeal on the claims that the Royal Shakespeare Company’s reputation did not extend to the public at large, that the two marks were not similar enough to cause confusion and that there was no ‘reasonable circumstance or evidence’ to suggest that the use of the second mark would take unfair advantage or be damaging to the reputation of the RSC. However, the General Court rejected this argument, confirmed the decision of the Board of Appeal of OHIM and stated that Jackson had not provided evidence of due cause and thus there was no justification for using the CTM. The Royal Shakespeare Company have, therefore, been successful in their attempt to have the CTM declared invalid, protected their existing trademarks and their reputation throughout the European Union.
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