CABINET CHAILLOT

The Opposition division considered that, although the documents provided by the opponent demonstrated the success of the songs of the band ‘Kool & The Gang’, these were indications of the artistic nature of the musical works and not indications of the commercial origin of the goods (such as CDs) which were marketed with the reference to the name ‘KOOL AND THE GANG’. 

Reputation of the trademark was therefore not admitted by the Opposition Division.

According to the Board of Appeal the filed documents show that ‘KOOL AND THE GANG’ is the name of a musical band, generally regarded as one of the best funk/R&B music groups of all times and one of the bands that shaped the funk genre in the 1960s and 1970s. The sign ‘KOOL AND THE GANG’ is used on CDs, vinyl discs and downloadable music files containing albums and songs of the band. The Board finds that use of the sign ‘KOOL AND THE GANG’ on the albums constitutes use as a trade mark. Concluding to the contrary would go against the abovementioned case-law and in particular the prior ‘THE BEATLES’ judgment (29/03/2012, T‑369/10, BEATLE / BEATLES et al., EU:T:2012:177).

The Board finds that the evidence on file demonstrates at least a certain degree of reputation of the earlier mark ‘KOOL AND THE GANG’ at the date of filing of the contested application.

The Board therefore remits the case to the Opposition Division.

R 292/2024-4 of 18/11/2024