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This article first appeared on WTR Daily, part of World Trademark Review, in (April/2019). For further information, please go to www.worldtrademarkreview.com.

  • Debonair opposed the registration of the figurative mark SO DIVINE based on earlier SO…? LOVELY marks
  • The opposition was partially upheld, as the marks were found to be similar and the goods/services were found to be partially identical or similar
  • However, the Opposition Division concluded that Debonair had failed to prove that its marks have a reputation

On 4 April 2019 the Opposition Division of the EUIPO issued its decision in Opposition No B 2 963 042.

Background

Debonair Trading Internacional LDA (the ‘opponent’) opposed the EU trademark application for the figurative mark depicted below, filed by Viato Health Ltd (‘the applicant’), against all the goods and services in Classes 3, 5, 10, 25 and 35.

The opposition was formed on the basis of unregistered marks used in the United Kingdom, and numerous EU and UK trademarks, including SO…? LOVELY (No 10891265).

The opposition was based on Articles 8(1), 8(4) and 8(5) of the Trademark Regulation.

Decision

Likelihood of confusion – Article 8(1) The Opposition Division first evaluated the likelihood of confusion between the goods and services, with the prior trademark covering goods in Classes 3 and 25. It considered that all of the products covered in Classes 3, 5 and 25 were similar or identical, and all except one type of service in Class 35 were similar.

Considering the similarities of the signs from the standpoint of the English-speaking public, the Opposition Division held that the term ‘so’ may be used as an adverb, conjunction, adjective or pronoun. Therefore, it has no particular meaning with regard to the goods and services in question and possesses a normal degree of distinctive character. The distinctiveness of the terms ‘lovely’ and ‘divine’ was held to be low due to their laudatory nature. It was thus found that the dominant element is the term ‘so’.

Analysing the visual similarity, the Opposition Division confirmed that the public gives a greater degree of attention to the verbal elements. Thus, as both marks shared the dominant term ‘so’ placed at the beginning, the Opposition Division considered that the marks were similar to a low degree. In light of this, it was found that the contested sign and the prior mark were aurally similar to a low degree.

Regarding the conceptual similarity, the signs were found to be similar as they shared the element ‘so’, and the terms ‘divine’ and ‘lovely’ conveyed a similar concept, namely the excellence of the goods.

In light of the similarities between the goods, services and signs, the Opposition Division concluded that a risk of confusion existed.

Non-registered trademarks and reputation – Article 8(4) and 8(5) The Opposition Division first evaluated the non-registered marks invoked. As the opponent relied on the action of passing off, the Opposition Division recalled that the conditions of goodwill, misrepresentation and damage must be met.

The Opposition Division confirmed that the opponent must show that the contested mark would result in the public considering that the goods covered by that mark originated from the opponent. Although the Opposition Division found that the contested sign and the unregistered marks invoked were similar, the goods and services in Classes 10 and 35 covered by the prior signs were different. Therefore, the opposition on the basis of Article 8(4) was rejected.

The opponent claimed that nine of its EU trademarks enjoyed a reputation in the United Kingdom and Ireland. The Opposition Division recalled the cumulative conditions, namely that:

  • the signs must be identical or similar;
  • the earlier mark must have a reputation prior to the filing date of the contested trademark in the territory concerned; and
  • use of the contested mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark.

In considering reputation, the Opposition Division evaluated all relevant facts, including the market share held by earlier the mark, and the intensity, geographical range and duration of its use. However, the materials submitted were considered insuficient to demonstrate reputation in the relevant territories.

The Opposition Division pointed out that the mark must be recognised by a significant part of the public due to the intensity of its use and promotion. However, it was found that the evidence submitted consisted primarily of documents originating from the opponent, and did not include objective proof such as turnover or data from oficial sources regarding the market share. As such, there was no indication of the market size of the relevant goods in Class 3 in the United Kingdom or Ireland. Although the documents demonstrated use, they could not support a finding of reputation due to their non- objective nature. Thus, the opposition under Article 8(5) was rejected.

Comment

The decision demonstrates the strict approach adopted by the Opposition Division, namely the finding that verbal and semi-figurative signs are similar. It was concluded that a similarity existed due to the sole presence of the term ‘so’, despite the complexity of the contested mark. Moreover, the case did not involve a comparison of two names but, rather, a comparison of two slogans. However, surprisingly, a risk of confusion was found. This strict position highlights the challenges faced by potential applicants when conducting searches, as the EUIPO may find similarities even where the signs are complex.

Finally, when claiming reputation in a mark, the trademark owner must be able to submit a variety of objective evidence: the owner must be able to demonstrate the position occupied by the mark on the market, the duration, extent and geographical scope of its use, and the size of the investment made in promoting it.

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