Registered trade marks can be used to cancel the registration of other identical/similar trade marks that have been subsequently registered. However, monitoring the use of the same/similar trade marks by others requires a multifaceted strategy. One of the methods is to keep a watch on trade marks being filed. Another is to record trade marks with Customs authorities to be alerted to a competitor trying to move goods across the border.
The owners of Peppa Pig discovered that a competitor had registered and was using a confusingly similar mark when the Italian Customs authorities intercepted a consignment of clothing under a similar mark using the word TOBBIA. An action was launched to cancel the registration of the competitor's trade mark.
In a recent decision* the General Court of the European Union (GC) has upheld the cancellation of the registered European Union trade mark for TOBBIA shown below.
The challenge was brought on the basis of the earlier registered European Union trade mark for PEPPA PIG shown below.
Both the trade marks were registered for clothing, footwear and headgear. The case turned on the issue of similarity of the marks.
The GC upheld the decision of the Board of Appeal (BoA). The BoA had found that the two trade marks were similar and in view of the goods covered being identical, there was a likelihood of confusion on the part of the public that the goods under the TOBBIA trade mark maybe considered as connected to or coming from the same source as the goods under the Peppa Pig trade mark.
Interestingly the BoA had itself overturned the decision of the Cancellation Division (the tribunal below). The Cancellation Division had found that the trade marks were not similar enough for there to be confusion amongst the customers of the products. However, the BoA found the marks were similar overall: the practically identical shape and features of the head and face outweighed the slight differences in the clothing of the characters and that the faces pointed in the opposite directions, the word Peppa and TOBBIA had a similar syllabic composition, both the images recalled a pig and 'Peppa' and 'TOBBIA' would be considered as the names of the animal characters. Despite the obviously different verbal elements in the two marks and that verbal elements are usually considered to carry more significance than non-verbal elements in the comparison of marks, in this case the overall similarities were considered stronger than the differences.
It is understood that in the clothing sector consumers rely primarily on the visual image of trade marks. The identical look of the animal character in both signs was considered to be of significant importance because of its position and size in both marks. The BoA considered that customers could believe that because the goods under both marks were similar these came from the same or related companies. This was sufficient to cancel the registration.
It is not uncommon that a company may have many different lines of clothing; and while keeping to the core look and feel of the image in its primary trade mark it may also have secondary trade marks for its different lines that introduce small changes to the primary image.
This case demonstrates that trade marks are an effective weapon in protecting the public from knock-offs of popular characters. Drawings of characters are protected by artistic copyright but copyright can and should be supplemented by trade mark registration. It also serves as a reminder to carefully consider the mechanisms in place to monitor and deal with competitor activity across the market, especially in the context of important and valuable trade marks.
*Case T‑777/17 decided on 21 March 2019