Bringing cases before the Court of Justice of the European Union

Attorney (H) Søren Vasegaard Andreasen has recently concluded an opposition case against an EU trademark. The case was brought before the Court of Justice of the European Union in Luxembourg against the European Patent and Trademark Office (EUIPO).

The case concerned an American company that wanted to register its trademark in the EU, within a number of trademark classes. The company already had a number of trademarks both in the EU, but also in many other countries around the world. However, difficulties arose because the trademark in its name could be reminiscent of an already existing trademark belonging to a Canadian company. However, the two trademarks existed side by side in several other countries, also within the same classes.

The EUIPO had refused the registration in the EU when the existing trademark owner objected. The case was taken through the administrative system before the client wanted to bring it before the Court of Justice of the EU.

For the CJEU, the case primarily concerned whether the two marks were likely to be confused. This required an in-depth examination of a number of criteria, such as

• Whether the trademarks were spelled the same or closely similar
• Whether there were phonetic similarities between the marks in just one of the official languages of the EU
• Whether the companies' products are within the same area
• Whether the products offered by the companies are targeted at the same customer groups

All with a view to assessing whether the risk of confusion is sufficiently great that the trademark application should be rejected.

Consequences of the verdict

In the specific case, the EU Court of Justice found that the trademark application should be rejected because there was a sufficient risk of confusion. Our client must therefore find another way to market its products within the EU. However, with the judgment in hand, our client can relatively easily stop the other company from marketing itself in countries where my client has already registered its trademark, while the competitor is not yet in the relevant market.

If you own a trademark, or are considering registering a trademark, you should seek professional advice from an experienced advisor or lawyer. If you have ambitions that the trademark will be used for export and sale in other countries, you should strongly consider having it registered as an EU trademark.

Most trademark cases are brought in Denmark before the Maritime and Commercial Court. Cases before the Court of Justice of the European Union must be brought by a lawyer admitted to practice in an EU or EEA member state.

If you would like to hear more about what we can offer in the form of advice and litigation regarding trademarks, you can contact attorney (H) Søren Vasegaard Andreasen at telephone 82828242 or sva@paragrafadvokaterne.dkSøren has experience with litigation before all Danish courts and the European Court of Justice.