More than 'Meats' the Eye in Trade Mark Opposition

Background

P.G. Nikas S.A. was founded in 1967 and is based in Attica, Greece. The company sells cured meats under the brand name 'NIKAS'.

Panagiotis G. Nikas founded the company which he sold in 2004. After the sale Mr Nikas maintained an interest in the cured meat market and in August 2013 filed a CTM Application for a word and device mark under number 012083556 for the following stylised mark.

The application covered "meat, cooked pork meats and sausages, oils and fats edible, preserved and canned foods" in class 29.

The distinctive part of the mark is the word 'NIKA'.  The remaining part of the mark means "with recipe and care by".

P.G. NIKAS SA opposed the application on the basis of earlier Greek trade mark registration no. 220189 for the word mark PANAGIOTIS NIKAS AVEE, registered in connection with "meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes, eggs; milk and milk products; edible oils and fats" in class 29.

The opposition was based on the earlier mark as well as the reputation P.G. Nikas has in the mark NIKAS under Article 8(5) CTMR. The Opposition Division accepted the opposition and Panagiotis G. Nikas appealed.

Board of Appeal Decision

The Board of Appeal upheld the decision of the Opposition Division. It concluded that that the marks were visually, phonetically and conceptually similar as they both refer to the name of the same person and a likelihood of confusion was inevitable.

The applicant argued that he had produced a series of adverts in Greece to make consumers aware of their disassociation with P.G. NIKAS S.A.

The Board of Appeal ruled that the applicant's effort to dissociate the marks was too little as only 10 adverts were produced in Greek newspapers over a period of two months, especially given the fact that the reputation of the company operating under his name had been built up over 30 years of extensive use.

Panagiotis G. Nikas also argued that the opposition was an attempt to prevent him from using his 'own name'. The applicant cited Article 12 CTMR which states that "a community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade his own name or address; provided he using them in accordance with honest practices in industrial or commercial matters."

The Board of Appeal ruled that Article 12 CTMR was not relevant as this provision relates to CTMs, whereas the relevant earlier trade mark is a Greek registered trade mark.

Furthermore, the Board confirmed that the provisions in Article 12 were to allow the use of your own name in accordance with honest practices and that this is very different from registering your own name to achieve a trade mark as a monopoly right.

The Board did not make any finding as to whether the applicant had behaved in accordance with honest commercial practices by selling his business and trade marks and then attempting to register a confusingly similar trade mark for the same goods.

The applicant has until 9 May to appeal the decision to the General Court.

Amendment of Article 12

From 23 March, Article 12 will be amended when new EU reforms are introduced. It will be amended so that a natural person's name may be a defence to trade mark infringement but use of a company name is not. This partially reverses the current position where companies may benefit from the own name defence.