The decision in Case R 295/2023-1 (BLUEBERRY / BLACKBERRY) provides a good example of how Article 8(5) of the European Trademark Regulation (EUTMR) operates in practice. Although this rule is well known in EU trademark law, its application it in fast-changing markets still raises important questions.
Unlike Article 8(1)(a) and (b) EUTMR, which focus on identity and likelihood of confusion, Article 8(5) protects trademarks with a reputation even in relation to dissimilar goods or services. Its rationale lies in recognizing that a trademark may serve not only an origin function but also advertising and investment functions, thereby conferring independent economic value on the sign.
However, Article 8(5) EUTMR only applies if certain requirements can be met. In particular, it requires that the relevant public establish a link between the signs and that the use of the contested mark gives rise to a sufficiently serious and non-hypothetical risk of unfair advantage or detriment.
Against this background, the current decision stands out. It illustrates how these principles of Article 8(5) EUTMR may be applied in contexts where product boundaries are increasingly ambiguous and technological innovation is driving the convergence of distinct markets.
The contested application concerned a word figurative mark incorporating the word “BLUEBERRY” together with a graphic element and the expression “powered by i-charging”, covering battery chargers and electric vehicle chargers in Class 9.
The opposition was based on the earlier word mark BLACKBERRY, focusing on Article 8(5) EUTMR. After separate revocation proceedings, the earlier mark retained protection solely for a narrowed range of goods, namely mobile phones, smartphones, and specific categories of software.
The Board of Appeal upheld the opposition in its entirety based on Article 8(5) EUTMR, without examining the likelihood of confusion under Article 8(1)(b) EUTMR.
The Board found that the earlier mark enjoyed a high degree of recognition which was sufficient to establish a reputation for mobile phones and smartphones and a moderate degree of reputation for automotive software.
This finding was made notwithstanding the partial revocation of the earlier trademark and the fact that its strongest market presence dated back to earlier periods. The Board emphasized that, even within a rapidly evolving market environment, a strong reputation cannot dissipate instantaneously merely as a consequence of increased competition.
In assessing similarity, the Board focused primarily on the verbal elements “BLUEBERRY” and “BLACKBERRY”, considering the additional elements of the contested sign to be of limited significance due to their size and descriptive character and concluded that the signs are conceptually not comparable, but visually to a below-average degree and aurally to an above-average degree similar
The Board subsequently concluded that the relevant public would establish a link between the signs. In reaching this determination, it relied not solely on the lexical similarities between the terms, but also on the broader technological context. In particular, it is considered that electric vehicle charging equipment may be functionally interconnected with smartphones and software systems within the evolving ecosystem of smart mobility and connected devices.
On this basis, the Board found that the use of the contested sign would take unfair advantage of the reputation of the earlier mark.
It reasoned that the relevant public might perceive the contested goods as technologically linked to BlackBerry systems, thereby benefiting from the image associated with the earlier mark, particularly in terms of security and technological reliability.
In this respect, the Board’s assessment rests on the premise that the similarities between the signs, combined with the broader technological context, are sufficient to give rise to a transfer of the earlier mark’s image to the contested goods. The finding of unfair advantage thus follows from the perceived association between the marks and the potential attribution of the earlier mark’s qualities to the goods covered by the contested sign, without further elaboration on how such attribution would materialize in the relevant market.
Viewed in its entirety, the decision reflects a coherent application of Article 8(5) EUTMR, in which each constituent requirement— as developed in the settled case-law — is examined in a structured and sequential manner, with every stage of the analysis logically building upon the preceding assessment.
At the same time, it illustrates how the assessment outcome may be significantly influenced by the interpretation of key concepts, in particular, the scope of the link between the signs and the threshold applied in assessing unfair advantage.
In the present case, the reasoning suggests that the finding of unfair advantage follows closely from the establishment of a link, with only limited further examination of the specific competitive dynamics and tangible market effects within the relevant economic context.
The decision in BLUEBERRY / BLACKBERRY demonstrates how Article 8(5) EUTMR can operate in a context of increasing technological convergence.
While the Board formally applies the established criteria, its reasoning reflects a broad interpretation of both the link between the signs and the notion of unfair advantage. In particular, it relies on an inferred transfer of image based on the interconnected nature of modern technologies, rather than on concrete evidence of market behaviour.
This approach highlights a potential shift in the practical application of Article 8(5) EUTMR, raising the question of how far reputation-based protection may extend in markets where product categories can no longer be clearly delineated.
