“Compton” : New Yorker ./. BIW Invest

BIW Invest AG, based in Switzerland, is the proprietor of the EU trademark "Compton", which was registered for clothing and luggage. The well-known fashion chain New Yorker filed a nullity request with the EUIPO against the registration of said trademark.

The request was initially rejected. However, in the appeal instance of the EUIPO, New Yorker was ultimately successful and the trade mark was canceled (decision of 16.09.2022, ref. R 1913/2021-2).

In response, the trademark owner turned to the General Court of the European Union (EuG) to challenge this decision.

The General Court took the view that the assessment of the protectability of the mark should not be based on the view of a public interested exclusively in fashion, but rather on the general public.

Furthermore, the court stated that “Compton”, the name of a suburb of Los Angeles, regardless of its connection to various artists in the hip-hop scene, may only have been known to a small part of the relevant public at the time of the trademark application in 2015. In this respect, there was no lack of protection due to a geographical indication of origin. A lack of distinctiveness was also denied by the court. On this basis the EUIPO's decision was annulled and the "Compton" trademark and related figurative marks remain protected in the territory of the Union for BIW Invest.

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