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10 September 2019TrademarksSaman Javed

CJEU sides with Oakley in trademark opposition ruling

Europe’s highest court has sided with Oakley, overturning a ruling by the European Intellectual Property Office (EUIPO) that the eyewear maker could not stop a Chinese individual from registering a trademark which it said was too similar to its earlier trademarks.

In a decision earlier today, September 10, the Court of Justice of the European Union said the Board of Appeal for the EUIPO erred in its assessment that Xuebo Ye’s applied-for mark would not cause a likelihood of confusion among consumers.

In July 2014, Xuebo Ye applied to register a figurative trademark for an elliptical shape with a rectangle in its centre in class 9, 18 and 25 for goods such as glasses for glaciers, corrective lenses, luggage bags, footwear and clothing.

Later that year, the application was opposed by Oakley, which said the mark would likely be confused as one of its earlier trademarks for an elliptical shape. Oakley’s trademark is also registered in classes 9,18 and 25.

In November 2015, the Opposition Division of the EUIPO dismissed the opposition in its entirety. Oakley appealed the decision, but this was also dismissed by the EUIPO’s Fourth Board of Appeal.

The Board of Appeal found that although the products covered by the applied-for mark and earlier trademarks are similar, the non-distinctive nature of the earlier trademark and the practice in the market of applying variants of simply figurative elements to products means that a likelihood of confusion does not exist.

But, the CJEU said the Board of Appeal erred in its ruling because it based its judgment on two particular features of the applied-for mark, namely the difference between its maximum height and minimum height, and the totally rectangular shape of the interior of the elliptical shape.

The CJEU said the Board of Appeal contradicted itself because in its judgment it also found that these two characteristics were not noticeable until after careful consideration of the mark.

“Consequently…the contested decision, which amounts to finding that there is a low degree of similarity between the signs in question, taking into account differences which are either insignificant or of little importance, while these signs are similar to a high degree, the Board of Appeal … made an error of assessment,” the CJEU said.

The CJEU also dismissed the Board of Appeal’s determination that Oakley could not stop the registration of the applied-for mark because its earlier trademarks only have a “weakly distinctive character”.

“It must be borne in mind that recognition of a weakly distinctive character of the earlier mark does not prevent a finding of a likelihood of confusion.

Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one element among others involved in that assessment.

It said that even in the presence of a weakly distinctive earlier trademark, a likelihood of confusion may exist if there is a similarity between the disputed trademarks and the goods they cover.

It concluded that because Xeubo’s applied-for mark and Oakley’s earlier trademarks were found to be similar, and cover similar goods, a likelihood of confusion exists.

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