General Court (First Chamber), 5 July 2016, in case T‑518/13 (Future Enterprises Pte Ltd v. EUIPO and McDonald’s International Property Co. Ltd)
European Union trade mark — Invalidity proceedings — European Union word mark MACCOFFEE — Earlier European Union word mark McDONALD’S — Article 53(1)(a) and Article 8(5) of Regulation (EC) No 207/2009 — Family of marks — Taking unfair advantage of the distinctive character or repute of the earlier mark — Declaration of invalidity
Several marks possessing common characteristics which make it possible for them to be regarded as part of a ‘family’ when, inter alia, they reproduce in full the same distinctive element with the addition of a graphic or word element differentiating them from one another, or when they are characterised by the repetition of a single prefix or suffix taken from an original mark
Where an application for a declaration of invalidity of a mark is based on the existence of several previous marks possessing common characteristics which make it possible for them to be regarded as part of a family, the establishment, on the part of the public concerned, of a link between the mark in respect of which a declaration of invalidity is sought, and the earlier marks may result from the fact that the former has characteristics capable of associating it with the family consisting of the latter.
categoria:European Case Law