EU General Court sets aside decision in ‘Dayaday’ dispute
The EU General Court has annulled a decision by an appeal board at the European Union Intellectual Property Office (EUIPO) which had only partially allowed a trademark opposition against ‘Dayaday’.
On Friday, June 1, the court set aside the decision of the EUIPO’s Second Board of Appeal after Casual Dreams, a Spanish retailer of women’s accessories and jewellery, appealed against the earlier ruling.
The case concerns the figurative EU trademark ‘Dayaday’, which Miguel Ángel López Fernández applied for in October 2014. The mark covers classes 9, 16 and 24, including scientific and laboratory research apparatus (class 9); adhesives for stationery or household purposes (class 16); and textile products (class 24).
In January 2015, Casual Dreams opposed the application based on five Spanish figurative marks, two of which were in all upper case letters; the remaining three were in lower case form plus an image.
Casual Dreams said there would be a likelihood of confusion with these marks and that there would still be confusion even where the goods and services were not identical or similar, because of the reputation of its Spanish national marks.
The earlier marks covered classes 3, 14, 18, 25 and 35.
The EUIPO’s Opposition Division rejected the opposition in December 2015, after which Casual Dreams appealed against the decision.
In October 2016, the Second Board of Appeal of EUIPO partially allowed the appeal.
The board found that the signs had a high degree of visual similarity and were phonetically identical. It added that English speakers would consider the signs to be identical conceptually, but that no conceptual comparison could be made by non-English speakers. In assessing likelihood of confusion, the board said there would be confusion surrounding some goods in classes 16 and 24 of the applied-for mark because of their similarity.
On Casual Dreams’s second plea—that there would be a likelihood of confusion based on the fame of its Spanish marks—the Board of Appeal held that the company had not proved or convincingly argued that the applied-for mark would unduly profit from or be prejudicial to the distinctive character or the reputation of the earlier marks.
Casual Dreams claimed that the marks “are clearly reputable on a national scale”.
The court examined Casual Dreams’s second plea, saying that the Board of Appeal had failed to examine whether the marks were famous—a finding which provides greater protection for a mark—but had only assessed the possible damage to the marks’ reputation. It therefore annulled the earlier ruling on this basis.
The court ordered the EUIPO to pay its own costs and those incurred by Casual Dreams.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories like this sent straight to your inbox.
Today's top stories
EU files WTO dispute against China over IP practices
