EU court rules in favour of shoe retailer in EUIPO dispute
The EU General Court today upheld an appeal made by Spain-based shoe retailer Unipreus, setting aside a previous decision by the European Union Intellectual Property Office (EUIPO) that denied the company’s trademark opposition.
In January 2015, second-hand consumer goods website Wallapop, which is also based in Spain, applied to register a figurative mark at the EUIPO for the name ‘wallapop’ in lower case and stylised font.
Wallapop sought to register the mark in class 35 for services relating to online sales and e-commerce for its website www.wallapop.com.
That same month, Unipreus opposed the mark based on its earlier Spanish figurative trademark which features the word ‘wala’ in black font, followed by a smaller ‘w’ in green font.
Unipreus’s mark was registered in 2009, covering goods relating to sports equipment in class 35.
The company sells products on its website www.walashop.com.
The EUIPO’s Opposition Division rejected the opposition in 2015.
In January 2017, the EUIPO’s Fifth Board of Appeal upheld the Opposition Division’s decision on the ground that the goods and services covered by the marks are different. However, the board did recognise that the marks were slightly similar visually and phonetically.
According to the board, the services covered by the applied-for mark were intended to cover an intermediary between sellers and buyers and did not relate to the sale of any sports equipment. Instead, Wallapop’s objective was to provide an online platform for people to buy and sell second-hand goods.
The board said that Unipreus’s earlier mark did not protect online sales at www.walashop.com and only covered “traditional” retail services.
But today, the court said that the services covered by both of the marks are available via the internet and are consequently competitive.
The court added that the use of the word “retail” in the earlier mark’s goods and services includes both sales from a shop and those via the internet.
In addition, the court concluded that the general public may purchase goods on Wallapop’s website that are identical or similar to goods covered by Unipreus’s earlier mark.
“Consequently, the services covered by the mark applied for indirectly respond to a similar need, from the point of view of the general public, of the sports equipment retailing services covered by the earlier mark, and allow them to purchase the goods in question,” said the court.
The court concluded that the services covered in Wallapop’s applied-for mark do not exclude the trading of new goods.
As a result, the board was wrong to find that the services at issue were different, the court ruled.
The board’s earlier decision was set aside and the EUIPO was ordered to bear its own costs and those incurred by Unipreus. Wallapop was told to bear its own costs.
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