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Victory voor Tchibo

September 2019. Coffee brand Tchibo’s logo is well-known in Germany. And if a trademark has a reputation in one or more of the 28 EU member states, it’s given extensive protection.

Left: Tchibo’s registered European trademark; right: the logo that’s been refused registration in the EU

Advantages of reputation

The scope of protection that can be afforded to a well-known trademark was again revealed in the dispute between Tchibo and the owner of a device mark who applied for it to be registered in the EU, also for coffee. Although there are significant differences between the two logos, Tchibo nevertheless succeeded in halting the registration of the red logo. That’s the advantage if your trademark enjoys widespread reputation. But of course, you first have to prove that it does.

In good order

And in that regard, Tchibo had its files in good order. The company produced clear, well-organised documentary proof of frequent long-term use of its own logo. It also showed evidence that it had made major investments in marketing the trademark, and handed over market research demonstrating the logo’s reputation.

 

Tchibo managed to produce comprehensive and relevant proof of the use and reputation of the logo

A ‘link’ is enough

So once you’ve demonstrated the reputation of a EU-trademark in one EU country, it’s relatively easy to prove that it’s being infringed since there’s no extra obligation to prove a risk of confusion. It’s enough just to show that one trademark calls to mind the other and that consumers could associate the two. And this was the case with Tchibo, according to the European Trademark Office EUIPO, which concluded that consumers would assume there was a linkbetween the two trademarks. As a result, the red trademark would benefit from the reputation of the Tchibo trademark, thereby infringing it.

Build a case file

You might not be surprised to read that a company had its proof of use and reputation in such good order, but it’s rarer than you think. Successful opposition procedures often fall at the final hurdle simply because the trademark owner fails to produce enough relevant proof. What’s more, it often isn’t the smallest trademark owners who are wrong-footed. So a key rule of thumb for every trademark owner is: make sure you build a good case file with plenty of evidence showing the normal use and – if possible – reputation of your most important trademarks. Doing so can be very useful!

 

Bas Kist