EU General Court rejects Polish company’s trademark appeal

The EU General Court has rejected a Polish company’s four-pronged argument that it had hoped would undo a decision rejecting its trademark.

On Tuesday, December 12, the court affirmed the European Union Intellectual Property Office’s (EUIPO) decision to refuse registration of a mark that publishing company For Tune had applied for.

For Tune had sought registration of a mark consisting of two words: the word ‘opus’ in blue and the letter ‘o’ in white inside a blue rhombus, and the word ‘aeternatum’ in black, upper-case letters.

The mark, which covers classes 9, 16, 35, 40 and 41, was published in 2012.

But fashion company Simplicity trade opposed the mark, based on its earlier mark ‘Opus’ for classes 16 (printed matter), 35 (advertising) and 41 (education and training).

Three years after the mark was published, the EUIPO’s Opposition Division partially upheld Simplicity’s opposition.

The following year, For Tune appealed against the decision, but the EUIPO’s Second Board of Appeal dismissed the appeal.

For Tune complained to the EU General Court, presenting four arguments.

First, For Tune alleged that the difference in the relevant public for classes 16 and 41, and class 35 was not taken into account.

In response, the EUIPO argued that it took into account the high level of attention with regard to the services in class 35 when assessing the likelihood of confusion and that there was no need to carry out a separate assessment of the likelihood of confusion concerning the other classes.

According to the General Court: “In the first place, it must be stated, as the Board of Appeal correctly pointed out in paragraph 19 of the contested decision, that the goods and services at issue are aimed at the general public and also at ‘business customers with specific professional knowledge or expertise’.”

Second, the Poland-based company claimed that the EUIPO’s comparison of the marks from the visual, phonetic and conceptual standpoints was incorrect, and essentially that the marks are “totally different”.

Again, the General Court sided with the EUIPO. After assessing whether the ‘opus’ was dominant (the court found it was) and whether the elements in the applied-for mark are distinctive (the court found the elements were not distinctive), the General Court rejected the argument.

The court affirmed the EUIPO’s finding on For Tune’s third argument—that the assessment of the earlier mark’s distinctive character was incorrect.

The court explained: “The Board of Appeal found that the distinctive character of the earlier mark was normal because the word ‘opus’ was relatively original in relation to the goods and services covered by the earlier mark, which do not relate to the musical sector.”

Finally, For Tune claimed that the EUIPO had erred in its assessment of the likelihood of confusion. The court rejected this argument.

For Tune was ordered to pay the costs of the action.

Complete our  Reader Survey and tell us what you think about WIPR for a chance win a corporate subscription worth £2450.

Today’s top stories:

Bet365 gamble pays off at EU General Court

Birkenstock ends Amazon relationship because of counterfeit goods

Indie band and Demi Lovato sign truce in song dispute

Facebook takes on ‘Faithbook’ mark at TTAB

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories like this sent straight to your inbox.