Please see below for a summary of the Jugdment issued by the General Court of the European Union, For Tune v EUIPO, Case T-579/15, 8 November 2016, kindly prepared by Craig Kelly (Legal Assistant at MARQUES' member Baker & McKenzie).
In its recent decision in For Tune v EUIPO (Case T-579/15, 8 November 2016) the EU General Court agreed with the EUIPO's Board of Appeal that there was a likelihood of confusion between the EUTM device mark application 'fortune' and the earlier German mark 'FORTUNE-HOTELS', both covering various services including in Classes 35 and 41 under Article 8 (1) (b) EU Trade Mark Regulation (207/2009/EC).
On the point of relevant consumer, the EU General Court agreed with the Board of Appeal that services in Classes 35 and 41 were directed both at the general public and professionals in that sector and as the earlier trade mark was a German trade mark, it was necessary to assess the likelihood of confusion with regard to the German public.
In its appeal to the General Court the applicant had argued that the signs were visually distinguishable as they were spelt differently and were also different in their design. Unlike the earlier mark, the accent in the application was placed on the element 'for', which was stylised and held in a different colour. Furthermore, consumers would notice the difference in the length of the signs "FORTUNE" (one word) vs "for tune" (two words).
The judges found that the shared dominate element in both signs was the element 'fortune' and this would be noticed in the overall impression of the proposed mark. This was supported by the fact that the English and French word 'fortune' (in the sense of "chance") had entered the German language and so would be understood by the relevant consumer. This finding was inter alia confirmed by the German online dictionary "Duden".
The court agreed with the Board of Appeal that there was a average degree of phonetic similarity between the marks in question, when taking into the account the absence of the word element 'hotels' in the application. unlike the earlier mark, the accent is placed on the element 'for', which is stylised and in a different colour to that of the mark applied for. The judges also noted that the symbol ®, present only in application and indicating the legal status of that mark, was not pronounced.
The Court agreed with the Board and held that there was an average degree of visual and phonetic similarity, a certain degree of conceptual similarity and since the similarity of the services had not been challenged, overall a likelihood of confusion between the marks in question under Article 8(1)(b).
On reflection, the two marks are very similar, even with the 'hotel' element included. The application mark 'fortune' although stylised and held in two different colours, does give the impression of just one word .