EU General Court backs EUIPO in nutty TM dispute
The European General Court has ruled that a trademark applied for by the owner of a nuts and seeds retailer must be rejected as it is likely to be confusing with an earlier mark.
The ruling, which was published today, February 12, upheld an earlier decision by the European Intellectual Property Office’s Fifth Board of Appeal.
The court determined that the mark, which was applied for by Et Djili Soy Dzhihangir Ibryam, the owner of Djili Soy, was phonetically “very similar, if not identical” to an earlier mark.
In 2016, Ibryam applied to register a trademark for the word “Djili” written in bold red letters, for goods including jellies, jams, nuts and seeds.
The application was opposed by Victor Lupu, who said it would cause confusion against his earlier mark for the word “GILLY”, which was registered in 2009, for goods including meat, jellies, seeds and roasted peanuts.
In its decision, the General Court upheld the Board of Appeal’s finding that there was a likelihood of confusion between the two marks because the pronunciation of the word elements ‘dij’ in the applied-for mark and ‘gi’ in the earlier mark, were “almost identical”.
It also upheld that the pronunciation of the first ‘i’ of the applied-for mark “will be identical” to the pronunciation of the ‘ll’ of the earlier mark.
Additionally, it said the pronunciation of the last ‘i’ in the applied-for mark will be perceived by the general public as identical to that of the final letter ‘y’ of the earlier mark.
In his argument to the General Court, Ibryam argued that Lupu had registered the earlier mark in “bad faith, with the intention of creating confusion” and had not used the mark since 2010.
But, the General Court said the argument of bad faith was not a factor “that must be taken into account in opposition proceedings”. It also rejected Ibryam’s non-use argument.
The court said the issue of proof of genuine use was not raised by Ibryam before the dispute reached the Board of Appeal, and therefore the line of argument must be rejected.
It added that the goods covered by the applied-for mark and earlier mark were in part identical, and in part highly similar, which adds to the likelihood of confusion.
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