EUIPO - CBS Studios Inc. v/ Baidu Online Network Technology (Beijing) Co., Ltd.

Decision date

2016-11-08

Decision No.

B 002534686

Nature

Trademarks

Jurisdiction

EUIPO - Opposition Division

Parties

CBS Studios Inc. v/ Baidu Online Network Technology (Beijing) Co., Ltd.

CBS STUDIOS Inc. (hereinafter "CBS") was represented by Ms. Karina Dimidjian-Lecomte, Attorney, and Ms. Cristina Bercial, Attorney, assisted by Ms. Klervi Henry, Attorney.

CBS is the owner of the famous shield design mark, notably registered in the United Kingdom under n°2 621 228 for services in Classes 38 and 41

In February 2015, the Chinese company Baidu Online Network Technology (Beijing) Co., Ltd. (hereinafter "BAIDU") filed the EUTM application below for goods in Class 9

CBS filed an opposition against the Contested EUTM application on the ground of articles 8(1)(b), 8(5) and 8(4) EUTMR.

The EUIPO chose to analyze first the opposition in relation to earlier United Kingdom trademark registration cited above for which CBS claimed reputation in the United Kingdom.

The signs were found visually and conceptually similar, notably in light of the common arrowhead-shaped white device set against a black rectangular background.

Further, CBS had to demonstrate that the earlier trademark has a reputation in the United Kingdom. More precisely, CBS was required to prove that its trademark had acquired a reputation in the United Kingdom prior to the filing of the contested application.

As one of the most famous symbol of its iconic TV show Star Trek, CBS was able to submit substantive and extensive evidence supporting the reputation of the shield design mark. The evidence submitted included notably affidavits of CBS representatives, copies of articles from renowned publications such as the Daily Mail and The Guardian, various websites ’printouts, list of nominations and awards for Star Trek, copies of Star Trek movie promotion etc.

The opposition division stated that “it is clear from the evidence that the earlier trademark has been subject to longstanding and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources.

More precisely, the opposition division found that the earlier mark has a reputation in the United Kingdom for Entertainment services in Class 41. For reasons of procedural economy, it did not analyze the other territories claimed nor the other goods/services claimed.

The opposition division stated that “given the substantial degree of reputation of the earlier mark, the degree of similarity between the signs at issue is sufficient for the relevant public to make a connection between the sign applied for and the earlier UK trademark, that is to say, to establish a link between them.

Finally, CBS claimed that the contested goods in Class 9 were likely to be seen as merchandising products originating from the opponent and that by using the contested sign, which is very similar to CBS’s earlier reputed mark, BAIDU would unfairly free-ride on the investment made by CBS in promoting and building up the reputation of its mark.

The opposition division considered that the earlier mark enjoys a substantial degree of recognition among the relevant public, and that in light of its attractiveness, it is likely to be exploited even outside its natural market sector, by licensing and merchandising. Therefore, using the contested goods in Class 9 bearing the contested mark may be considered as a message of belonging to the subculture with which CBS’s mark is associated.

Therefore, the opposition division concluded that BAIDU would have a competitive advantage as the marketing of the contested goods would benefit from attractiveness gained by association with CBS’s mark, and thus, the contested application is likely to take unfair advantage of the distinctive character of the repute of CBS’s mark.

The EUIPO therefore upheld the opposition and rejected the EUTM application in its entirety on the basis of EUTMR Article 8(5).