Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.
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TUESDAY, 2 JULY 2013
a very trade mark case in General Court: ® (fig. mark) V. ® (fig. mark)
In Case T-89/12, the General Court had to decide a conflict between the following trademark owners over the “Registered trademark” symbol:
Repsol YPF SA- CTM applicant
Ayuntament de Roses – earlier Spanish mark
Class 25 “Clothing, footwear, headgear”
Class 35 including “advertising; retailing in shops of basic foodstuffs, pastry and confectionery, ices, prepared meals, tobacco, press products, books, tourist guides, road maps and maps, batteries, playthings, goods for cars, fittings and parts for cars, lubricants, fuel and carburants for cars, etc”
Class 41 “Education; providing of training; entertainment; sporting and cultural activities”
Goods in Class 25 such as “clothing; belts; swimsuits; bathrobes, etc”
Services in Class 35 including “advertising; tourism promotion, fair organization services, retail sale services, etc”
In 2010, the Opposition Division and Board of Appeal upheld partially the opposition for all goods in Class 25 and all services in Class 35 mentioned above. Due to the high level of visual similarity and aural identity, there is a risk of confusion for the relevant Spanish speaking consumer.
The General Court disagreed with the assessment of the BoA finding that there are some significant differences between the signs in conflict: the earlier mark represents a simple “R” in blue inside a circle of the same colour; the contested CTM is a more complex design with the letter “R” in a particular font with a prolonged line, in red, dark blue and white circles. Thus the “R” letters are written in different fonts and width and the signs produce a different overall impression.
Furthermore, the BoA did not take into account that the earlier mark has a weak distinctive character since it represents the registered trademark symbol, its distinctive character emerges from the blue color and thicker lines. The CTM applicant cannot invoke the case-law of the Spanish Supreme Court (Tribunal Supremo) regarding priority rights nor regarding the distinctive character of single alphabet letter. Finally, the applicant did not bring forward any evidence of coexistence of the marks.
However, this erroneous assessment does not mean the BoA made a mistake in the overall assessment of likelihood of confusion and correctly found that due to the overall similarity if the signs and identity of goods, the opposition was well founded on the basis of Article 8(1) b) CTMR.
Posted by: Laetitia Lagarde @ 10.38
General court, registered trademark symbol, likelihood of confusion,
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