The European Intellectual Property Office (EUIPO) decision handed down on 4 February saw Polar Music International AB, ABBA’s record company, victorious against Spanish winery Bodegas Francisco Casas. The winery had applied for a word mark for ‘Viña ABBA’. However, following an opposition from Polar, the EUIPO ultimately decided that the new application was identical or similar to the existing mark under article 8(5) EUTMR.
Polar registered the word ‘ABBA’ with the World Intellectual Property Organisation (WIPO) in 2019 for various goods and services across 21 classes. The registration was then designated to the EU and US. Prior to registration, the ABBA name already had substantial reputation internationally which had been evident since the 1970s when the band rose to fame by winning the Eurovision Song Contest.
In January 2021, Bodegas applied for a word mark for ‘Viña ABBA’ with the EUIPO in class 33 only for alcoholic beverages. The ABBA mark was originally registered in class 33. However, this class was removed from the registration in the EU following cancellation proceedings brought by Bodegas on the basis that the ABBA mark did not have reputation in relation to those goods.
In response to Bodega’s filing, Polar opposed the registration of the mark on the basis that the two marks were either identical or similar; the existing mark has a reputation; and the registration of the new mark would take unfair advantage of the existing mark in accordance with article 8(5) EUTMR. Polar provided substantial evidence to prove reputation. In consideration of this evidence and upon examination of the marks side by side, the EUIPO ultimately decided that the elements of article 8(5) EUTMR were satisfied and therefore it would not be possible for Bodega’s mark to registered. The EUIPO made direct reference to the fact that “it is probable that consumers’ economic behaviour would be influenced in favour of the contested goods solely because they are commercialised under the contested sign”.
If you have any questions on the above, please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or legal@mcdanielslaw.com.
