Could it be coincidence? Joe & The Juice v Central Parks labels

Posted: 31/05/2019

In a surprising decision, the EUIPO Opposition Division (OD) has dismissed an opposition by Joe & The Juice A/S (the opponent) against an EU designation application by Central Park labels GmbH (the applicant) for the sign shown below, allowing the designation to proceed to registration.

The applicant’s EU designation covered clothing, footwear and headgear in class 25 and various goods in class 18, including luggage and umbrellas. In its opposition notice, filed on 17 November 2017, the opponent relied on a number of senior Danish and EU trade mark registrations for the logo mark shown below, in both colour and greyscale, as well as the word mark JOE & THE JUICE, each covering various food products in class 30, non-alcoholic beverages in class 32, services for providing food and drink in class 43 and (in some cases) business management services in class 35. In reaching a decision, the OD focussed on the opponent’s colour logo as representing its strongest case.

Due to the differences between the goods and services at issue, the opposition was based exclusively on Article 8(5) of Regulation (EU) 2017/1001 (ie pertaining to reputation and unfair advantage). Interestingly, the opponent did not seek to rely on any unregistered rights (under unfair competition, passing off or otherwise), despite claiming that its marks enjoyed a substantial reputation in a number of EU territories.

Analysis

The opponent succeeded in establishing a reputation in its earlier mark in Denmark in relation to “cafés” and “snack-bars” only. In analysing the opponent’s evidence of reputation, the OD placed particular emphasis on that originating from independent third parties, such as the opponent’s auditors.

Further, the OD exercised its discretion under Article 8(5) of Regulation (EU) 2018/625 to allow some of the opponent’s survey evidence that had been filed “relatively shortly” after the applicable deadline, on the basis that it was to “merely strengthen and clarify the evidence initially submitted”. In doing so, the OD noted that the web-based survey in question was completed after the deadline had passed and could not therefore have been filed in advance.

In comparing the signs, the OD found them to be visually similar to a low degree, aurally similar to a very low degree and conceptually dissimilar. The OD also found the majority of elements comprising the opponent’s sign (with the exception of JOE) to be weak individually, on the basis that they alluded to the opponent’s services.

The OD favoured a detailed comparison of the signs, identifying and comparing their individual elements, rather than their overall impression, get-up, composition and colour scheme, and in doing so concluded that the relevant public was not likely to establish the requisite “link” between the two signs, particularly given the divergence in goods and services. The opposition was therefore rejected.

Applicant inspired?

Under the circumstances, this may appear to be a surprising decision and an appeal is perhaps likely. It would certainly be interesting to know whether the applicant drew any inspiration from the opponent’s earlier marks or whether the similarities in terms of composition and get-up are purely coincidental.

Key points

• Senior unregistered rights should always be considered in parallel with registered rights and be pleaded where available, as passing off and unfair competition laws can sometimes fill the gaps that trade mark law cannot.
• Evidence of reputation from independent third parties is likely to enjoy greater probative value.
• Facts or evidence filed outside a relevant time limit may still be accepted if they are supplemental and/or were not available within the time limit.

This article was published in CITMA Review in May 2019.

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