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Corendon just squeezes through

September 2019. Corendon Airlines has been told it can go ahead with the registration of its logo as a trademark in Europe. The opposition filed against its application by the Spanish bank Caixa, whose logo strongly resembles Corendon’s, has been rejected.

Left: The two EU logos Caixa used to attack Corendon’s logo (right)

Error

Corendon didn’t in fact have to do much to win this lawsuit, given that Caixa committed an error during the proceedings. The Spanish bank based its case on two European registrations of its logo, one in colour and the other in black and white. On page 1 of its judgement, EUIPO concluded that the case was inadmissible, since the date on which Caixa had applied to have its logos registered was 20 December 2017 and that of Corendon was 18 October 2017! So Caixa didn’t after all own older rights and therefore had no case on which to base its opposition! You do wonder how anyone could commit such a mistake. After all, the first thing you’d surely check when filing an opposition is the date it was applied for. That said, there is an explanation.

Seniority

Caixa does in fact own much older national trademark registrations to the same logo in many EU member states (since 1987 in the Benelux, for example). If you apply for a new European registration to a trademark for which you already own prior rights in a member state, you can claim seniority. To do this, you need to add the date of your older national registration to the new EU application. The aim is to save yourself extra costs by giving up your prior national registration while retaining the older date (seniority) within your new EU trademark for that specific country.

Caixa owns many older national registrations to its logo, for example in the Benelux (1987), France (1986) and Finland (1991)

Error of logic

Caixa similarly had the older dates of its various national registrations claimed as seniorities in its EU trademark registrations. But it mistakenly thought it could simply use the older national registration dates in the EU-trademark to oppose Corendon’s application. This was an error of logic: you can only appeal on the grounds of seniority in an opposition if you have surrendered your rights to the older national trademark. In other words, before you oppose you must either actively surrender your national registration or allow it to lapse. Unfortunately, Caixa hadn’t done either, and all its national trademarks are still valid. According to EUIPO it was therefore an open and shut case: as long as older national rights are still valid, seniority claimed in an EU-trademark can not be taken into account. It’s just one of many potential pitfalls you could fall into when filing an opposition.

Corendon’s logos: the new one on its website (left), but other variants are still out there

Corendon’s logos

It’s not entirely clear though how important this logo still is to Corendon. Its website uses a different one, yet the logo featuring the little star figure also still pops up here and there, even in a version whose colour is very similar to that of Caixa’s logos. Caixa presumably won’t leave it at that and may file a new invalidation action, this time based on its old national trademark rights.

Bas Kist