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20 March 2018Trademarks

Dog accessories retailer claims victory at EU court

A German retailer of dog accessories has emerged victorious at the EU General Court, after the court rejected a Spanish alcohol company’s trademark appeal.

The First Chamber of the General Court delivered judgment today, March 20.

Daniel Ostermann applied to register a figurative sign featuring the words ‘Dontoro dog friendship’ below a crown with the European Union Intellectual Property Office (EUIPO) in 2012. Ostermann owns Dontoro, an online shop selling goods for dogs.

The applied-for mark sought to cover classes 18, 20, 25, and 35, which include animal accessories, animal household accessories, clothing, and advertising material relating to the wholesaling of clothes.

Spanish alcohol company Grupo Osborne filed a notice of opposition in 2012, based on its own mark ‘Toro’ (EU trademark number 2,844,264), which covers leather goods and clothing in classes 18 and 25.

In 2015, the EUIPO’s Opposition Division partially upheld the opposition, agreeing with Osborne that there was a likelihood of confusion in all classes except in relation to some of the advertising services included in class 35.

Ostermann appealed against the decision and the First Board of Appeal sided with him. The services covered by class 35 (wholesaling and retailing of clothes online) of the applied-for mark are only similar to Osborne’s goods in class 25 (clothing, footwear) to a low degree, according to the appeal board. It extended this finding to classes 18 and 20 of the applied-for mark.

In addition, the word element ‘Toro’ in both marks gave the marks a low degree of visual and conceptual similarity for the Spanish and Italian speaking parts of the EU, and a low degree of phonetic similarity for the entirety of the relevant public. Overall, the board found that there was no likelihood of confusion.

Osborne appealed against the decision to the EU General Court and asked it to partially annul the board’s decision. It said the goods covered by class 35 have a “clear connection” to its own goods in class 25.

In response, the EUIPO said the goods covered were similar but only to a low degree.

The General Court found that because the clothing and footwear goods covered by the earlier mark are identical to the subject of the services sought to be covered by the applied-for mark, the goods share a close relationship.

According to the court, the appeal board made an error in finding that the goods covered were only similar to a low degree.

However, that error “cannot call into question the finding that there is no likelihood of confusion” as the board’s finding of a low visual, conceptual, and phonetic similarity between the marks was correct.

The court dismissed the appeal and ordered Osborne the pay the costs.

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