Due to a likelihood of confusion on the part of the English speaking part of the public, International trademark registration No 1 494 022 was refused protection in respect of the European Union.
The decision was enacted by EUIPO (European union intellectual property office) following an opposition filed by IPConsulting Ltd. on behalf of their client Ted Invest Ltd.
The opponent filed an opposition against all the goods of international registration designating the European Union No 1 494 022, figurative trademark.
The opposition is based on European Union trade mark registration No 13 125 877, figurative trademark.
Likelihood of confusion
The goods and services on which the opposition is based are considered by EUIPO Opposition Division identical to the opponent’s goods. In the present case, the goods found to be identical are directed mostly at business customers with specific professional knowledge or expertise.
Comparison of the conflicting trademarks
According to EUIPO Opposition division, the signs are aurally and conceptually similar to an average degree.
European Union trademark can be relied on in opposition proceedings against any application for registration of a European Union trademark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union.
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier trademarks on the market, the association that can be made with the registered marks, and the degree of similarity between the marks, and between the goods identified.
The goods are identical. In such cases the differences between the signs must be significant and relevant to a degree that allows consumers to safely distinguish the signs and to exclude the likelihood of confusion. In the present case, the differences between the signs are insufficient to enable the relevant public to safely distinguish between the conflicting trademarks.
The opposition is well founded on the basis of the opponent’s EUTM registration No 13 125 877. It follows that the contested trademark must be refused protection for all the contested goods.