Deutsche Post fails in TM opposition appeal at EU court
The EU General Court has dismissed an appeal by Deutsche Post against a trademark opposition decision that mostly went against the German postal service.
Today, June 26, the court rejected Deutsche Post’s appeal over the figurative sign ‘InPost’, which was applied for by Poland-based Inpost.
The applied-for mark, which was acquired from Inpost by Verbis Alfa and EasyPack (an owner of parcel lockers) in 2014, covers classes 6, 9, 35 and 39. Goods and services covered by the mark include boxes, apparatus for sorting parcels, and transport of parcels.
Deutsche Post, which delivers 61 million letters each day in Germany, cited the German word mark ‘Post’ and the figurative EU trademarks (EUTMs) ‘ePOST’ and ‘Infopost’ in its opposition.
In December 2013, the European Union Intellectual Property Office’s (EUIPO) Opposition Division partially upheld the opposition on the ground of a likelihood of confusion between the applied-for mark and ‘ePOST’ for certain services in class 35.
However, Deutsche Post’s opposition on the basis of the three earlier marks was rejected for the remaining goods and services in classes 9, 35 and 39, so the postal company appealed against the decision.
The EUIPO’s First Board of Appeal dismissed the appeal in June 2015, finding that although Deutsche Post’s trademarks and the applied-for mark shared the word ‘post’, they showed significant visual, aural and conceptual differences.
Again, Deutsche Post appealed against the decision, but the General Court dismissed the opposition.
The postal company limited its case to the national word mark ‘Post’ and EUTM ‘Infopost’, and didn’t claim any further infringement of ‘ePOST’.
According to Deutsche Post, the appeal board disregarded the enhanced distinctiveness of the trademarks and the similarity between the signs arising out of the dominant nature of ‘post’.
On visual similarity, the General Court agreed with the EUIPO that the ‘Post’ mark was similar to the applied-for mark as they both contain the word ‘post’, but that they differ because the applied-for mark contains ‘In’ at the beginning and the elements of the marks are arranged differently.
“It must be concluded that the Board of Appeal rightly considered that the signs at issue had a low degree of similarity, but showed, despite the common element ‘post’, significant visual, aural and conceptual differences,” said the General Court.
Deutsche Post’s argument that its trademarks have enhanced distinctiveness was also rejected.
“In any event, even if the earlier national word mark ‘Post’ has enhanced distinctiveness, that cannot compensate for the fact that there is no likelihood of confusion between the signs at issue,” added the court.
The appeal was dismissed and Deutsche Post was ordered pay costs.
This isn’t the first time that the EU General Court has dismissed an appeal from Deutsche Post.
In February, the court rejected the company’s opposition to the EUTM ‘Bepost’, filed by Belgium-based bPost.
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