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1 February, 2013

The key lesson from case T-60/10: the reputation of a mark can go beyond the relevant public as regards the goods or services for which an earlier mark is registered.

T-60/10 – Jackson International v Office for Harmonization in the Internal Market (OHMI) – Royal Shakespeare
These ironic words from Macbeth formed the basis of The Royal Shakespeare Company’s complaint in case T-60/10 – an important General Court decision for all brand owners seeking to rely on reputation to stop third parties taking unfair advantage of the distinctive character or repute of their earlier trade mark.

On 24 October 2003, Jackson International Trading Co. Kurt D. Brühl GmbH & Co. KG obtained a Community Trade Mark (CTM) registration for the word mark ROYAL SHAKESPEARE, claiming beers, alcoholic and soft drinks in classes 32 and 33, and the services of “providing of food and drink, restaurants, bars, pubs, hotels; temporary accommodation” in class 42.

The Royal Shakespeare Company (“the RSC”), however, is the owner of two earlier registered trade marks:
1. CTM registration no. 000908822 RSC-ROYAL SHAKESPEARE COMPANY (word mark),filed 17 August 1998; and
2. UK trade mark registration no. 2055924 RSC ROYAL SHAKESPEARE logo, filed 8 February 1996: Both registrations claim, inter alia, the Class 41 services but no goods or services in classes 32 or 33 or 42.

The RSC also holds rights in its non-registered word mark “ROYAL SHAKESPEARE COMPANY” which it has used in the course of trade in the United Kingdom as early as 1961.

Accordingly, in October 2006, the RSC filed an application for a declaration of invalidity against Jackson International’s CTM registration “ROYAL SHAKESPEARE” on the basis that:

  • it would deceive the public, for instance as to the nature, quality or geographical origin of the goods and services ;
  • its use without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the RSC’s earlier trade marks, which were well known in the United Kingdom; and
  • British national law would allow it to prohibit the use of the CTM under the law of passing off, in particular on the basis of its non registered trade mark ROYAL SHAKESPEARE COMPANY used in the course of trade in the United Kingdom.

On 13 February 2009 OHIM’s Cancellation Division rejected the RSC’s application for a declaration of invalidity.

The Cancellation Division ruling stated that “alcoholic drinks and catering services” and “theatre productions” belong to separated sectors and are usually produced and rendered by different undertakings. Accordingly, it was unlikely that use of the ROYAL SHAKESPEARE trade mark by Jackson International for ‘alcoholic drinks and café and restaurant services’  would tarnish the image of the RSC’s trade marks for ‘theatre productions’.

Thankfully, instead of following Shakespeare’s epigram to “kill all the lawyers”, the RSC filed an appeal and was successful. The Board of Appeal annulled the Cancellation Division’s decision and declared Jackson International’s “ROYAL SHAKESPEARE” Community Trade Mark invalid.

It was then Jackson International’s turn to appeal the Board of Appeal’s decision and so the matter was then heard before the General Court who maintained the Board of Appeal’s invalidation of Jackson International’s trade mark.

Importantly, the General Court found that theatre productions, contrary to what Jackson International claimed, are services aimed at the public at large and not merely at a limited number of consumers or an elite. In this day and age, the Court held, going to the theatre is an activity which is in principle open to the masses: access to theatres is available to all , including the average consumer. The power of attraction, reputation, and the prestige of the RSC’s name would therefore provide Jackson International with a commercial advantage – it was riding on the coat tails of the RSC.

Not only is this a sensible decision, it is important because it means that the reputation of a mark does not only depend on those persons who buy and use the goods or request the services in respect of which the mark in question is protected and used. It also depends on the knowledge the public at large and potential customers have of that mark, even if they have not themselves been customers, but simply know of the earlier trade mark.

The key lesson from case T-60/10: the reputation of an exceptional mark such as ROYAL SHAKESPEARE can go beyond the relevant public as regards the goods or services for which an earlier mark is registered for. Even if an earlier trade mark has been registered for goods and services aimed at a limited public (which is not true in the present case) it could be known to a wider public, namely the public at large, precisely by reason of its outstanding reputation.