May 2004
Mango's victory on protective helmets
The Spanish clothing company Mango successfully opposed a Community trade mark application for 'Mango' covering "protective helmets for work, sport, leisure and D-I-Y purposes". Mango clothing's opposition was based on its goodwill and reputation in the 'Mango' trade mark in Spain in relation to clothing.
The European Trade Marks Registry found that Mango clothing has reputation in Spain and that the complementary nature of clothing and protective helmets combined with the fact that both goods have similar end users meant that there was a likelihood of confusion between the two 'Mango' marks. The Registry considered that the public might associate the protective helmets promoted under the 'Mango' mark with clothes originating from Mango clothing. More particularly, the Registry held that if the 'Mango' mark for protective helmets was allowed to proceed, value would be added by the association with Mango clothing taking unfair advantage of the distinctiveness of Mango clothing's earlier mark. The concern was that the association might influence the purchasing choice of consumers.
Briffa Comment:
Owners of existing trade marks can oppose new trade mark applications for identical or confusingly similar marks. Ordinarily a trade mark owner wishing to prevent another person using an identical or similar mark in relation to non-similar goods or services must show damage resulting from such use. However, this case illustrates the importance of evidence and showing a link between the earlier goods or services and the later, dissimilar goods or services, in oppositions based on trade mark dilution before the European Trade Marks Registry. An opponent is required to establish either that (1) a commercial link exists between its goods or services or (2) a tarnishment of its mark is likely.