EUIPO delivers sweet victory for Haribo in trademark appeal
Haribo has successfully prevented a figurative trademark which would have been confused with the confectionery company’s earlier-registered Danish mark from being registered.
The European Union Intellectual Property Office’s (EUIPO) Fourth Board of Appeal delivered its decision on Thursday, September 27.
In March 2016, Trade Group Europe applied to register the mark ‘Magic Circus’, with the first word in black and the second in red, in classes 21, 28, and 30 at the EUIPO.
Haribo filed an opposition against the goods in class 30, which included candy, sweets, chewing gum, and lollipops. Haribo relied on its earlier-registered Danish trademark for ‘Circus’ (VR 2016 00529), registered in February 2016 in class 30 for confectionery.
In 2017, the Opposition Division upheld Haribo’s opposition. It said the word ‘Magic’ would be perceived as an adjective which qualified the word ‘Circus’ and noted that ‘Circus’ was the dominant element of the applied-for mark due to its large size and red colouring.
The Opposition Division determined that the goods covered by the marks are identical and a likelihood of confusion exists.
In response, Trade Group Europe filed a notice of appeal.
The company argued that consumers focus on the start of a trademark, so they will notice that the marks are completely different. Trade Group Europe also noted that the trademarks are different in length and colour, making them easy to distinguish.
In August 2018, ownership of the ‘Magic Circus’ trademark application transferred to C & T Holdings, a Danish company.
Last week, the Fourth Board of Appeal said that the Opposition Division rightly upheld Haribo’s opposition in relation to the goods in class 30.
The board said that the Danish public will understand the English word ‘Circus’, which is similar to the Danish term ‘Cirkus’. It also said the adjective ‘Magic’ is understandable when compared to the Danish word ‘Magisk’.
With this in mind, ‘Magic’ will be understood as an adjective which plays a “minor role” compared to that of ‘Circus’, the board said. This is particularly true because of the “eye-catching red colour” of the word ‘Circus’ in the mark.
The earlier-registered mark is totally incorporated in the applied-for mark, and colouring and letter stylisation is not sufficient to outweigh the similarities between the marks, the board concluded.
The board dismissed the appeal and upheld the EUIPO’s determination that the ‘Magic Circus’ mark cannot be registered in class 30. The board ordered C & T Holdings to pay the costs incurred by Haribo in both the opposition and appeal proceedings.
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