Case T-543/21: The EU General Court upheld a finding of likelihood of confusion on the part of the Spanish-speaking part of the relevant public between the figurative EUTM application shown and the earlier word mark REVANESSE for identical goods in class 5. It affirmed that the signs had a higher than average degree of visual and phonetic similarity, while the conceptual comparison remained neutral.
Case T-369/21: A figurative EUTM for uni (pictured) registered for "writing instruments including correction pens" in class 16 did indicate commercial origin and an attempt to invalidate it was correctly rejected. That conclusion was not undermined by the argument that "uni" was an abbreviation for "university" and "unicolour".
Case T-251/21: The Board of Appeal correctly found a likelihood of confusion between an application to register Tigercat and the earlier word and figurative marks CAT for identical goods in class 7. The Court said the Board "was right to conclude that the mere assertion of the purported coexistence of the earlier mark with third-party trade marks did not prove that there was no likelihood of confusion in the present case, given that the marks on which the applicant relies are not identical to those examined in the present case and they do not cover goods which are similar to those covered by the marks at issue."
Case T-176/21: In an invalidity case, the Court upheld a finding of likelihood of confusion between an EUTM for CCTY and the figurative mark shown for identical or highly similar goods, despite the high degree of attention that the relevant public might pay. The Court noted that "the differences caused by the other figurative elements and word elements comprising the earlier mark will not play an important role in the visual comparison on account of their secondary position in the sign and their descriptive or weakly distinctive character".
Case T-768/20: The Court annulled the Board’s decision in a case concerning genuine use of the figurative trade mark shown. It said the Board should have considered evidence referring to advertisements and offers for sale in the EU for services outside the EU, stating: "it is sufficient to state that there is genuine use of a trade mark where that mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods and services for which it has been registered, in order to create or preserve an outlet for those goods or services. Even if the applicant were to supply goods or services outside the European Union, it is conceivable that the applicant would make use of that mark in order to create or preserve an outlet for those goods and services in the European Union."
Case T-478/21: In revocation proceedings concerning an EUTM for BALLON D’OR, the Court said the Board erred in finding that an award ceremony such as the Ballon d’Or competition did not fall within the definition of entertainment. It explained: "The fact that a service intended to entertain the public is provided in the form of a competition, which includes the award of a trophy to reward a person's sporting performance, does not deprive it of its basic recreational and entertaining nature".
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Case T-288/21: The Court upheld a finding of unfair advantage under Article 8(5) in a case concerning an EUTM application for ALOVE (figurative). The earlier mark was LOVE (also figurative) and the goods and services were identical or similar. It said there was a risk "that the image of the earlier mark, which has been developed for years by the intervener, may be transferred to the applicant’s goods and services at issue, with the result that, as the Board of Appeal correctly noted, the mark applied for would be unduly ‘boosted’ on account of its association with the earlier mark".
Issue 139
Find out more about the 2022 Annual Conference in Madrid, Luxury Brands Symposium in Florence, webinar on Chinese IP and Corporate Focus Group Meetings
The response to the call for views on reviewing the designs framework in the UK was published on 12 July. The government received 57 responses, including one from MARQUES
The EUIPO's Grand Board will hold an oral hearing in the Iceland cases on 9 September 2022 at 09.30
The EUIPO has provided guidance on NFTs and unveiled a new EUTM filing form
A diplomatic conference for a Design Law treaty, the UK IPO joins the Global Brand Database and the first WIPO Global Awards are announced
Listen to the Talking MARQUES podcast on the MARQUES website or on Spotify
Read posts from MARQUES and from individual members on the Class 46 and Class 99 blogs