Oakley Inc (‘Oakley’) is a subsidiary company of the Italian company Luxottica, which specialises in lifestyle apparel such as sports equipment and notably sunglasses. Oakley’s design patents and trade marks are something that it has not been shy about defending, as it has done so many times before.
In 2014, a Chinese individual applied to the European Union Intellectual Property Office (‘EUIPO’) to register a figurative trade mark (a mark incorporating both images and words), that was similar to a registered mark belonging to Oakley. The mark was registered in classes 9 (scientific, nautical surveying and photography), 18 (leather/ imitation leather) and 25 (clothing, footwear and headgear). Subsequently, Oakley opposed the trade mark application, but it was dismissed by the Opposition Board of the EUIPO and the EUIPO’s Fourth Board of Appeal (‘the Board of Appeal’).
The Board of Appeal reasoned that even though the products covered by the applied-for-mark are similar with Oakley’s previous mark, it held that Oakley’s mark was not distinctive. Thus, the applied-for-mark could not infringe Oakley’s IP rights, as its mark failed to possess distinctiveness which meant there was nothing to protect. Furthermore, the Board of Appeal reasoned that since it was the practice of the industry to add variants to the design of certain elements, there was no likelihood of confusion with the consumer (as the design would be altered in the end) in practice.
Nevertheless, the European Court of Justice (CJEU) held that the above decisions should be overturned. It held that the had been a contradiction in reasoning, as trade mark rights need to be protected regardless of there being weak or strong distinctiveness present. The fact that there was a similarity between the two marks (as noted by the Board of Appeal) meant that the applied-for-mark should not be registered. Consequently, the CJEU overturned the earlier decisions and found that due to the similarity with both marks, there was a likelihood of confusion.