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16 October 2020TrademarksMuireann Bolger

EUIPO triumphs in trademark battle at EU General Court

The European Union Intellectual Property Office (EUIPO) has won a trademark case, after the EU General Court upheld its decision to reject an appeal against the registration of a mark by a French sports retailer yesterday, October 15.

In December 2016, Greece-based company, Athlon Custom Sportswear, filed an application for the registration of an EU trademark, ‘Athlon’, with the EUIPO.

The application was for goods including clothing and hats along with sporting equipment, and was opposed by French company Decathlon in April 2017. The company argued that its earlier trademark, “Decathlon”, also covered similar goods, and that the registration of the trademark would lead to consumer confusion.

In July 2018, the EUIPO’s opposition division upheld the opposition for all the goods on the grounds that there was a likelihood of confusion.

Two months later, Athlon filed a notice of appeal with EUIPO, against the decision of the opposition division. In March 2019, the second board of appeal of EUIPO annulled the decision of the opposition division and rejected the opposition in its entirety, holding that there was no likelihood of confusion between the marks at issue.

The board took note of a limitation request filed by Athlon concerning the list of goods and accepted it. Next, the board took the view that the signs at issue “had a very low degree of visual similarity, and an average degree of phonetic similarity”.

With regards to the word ‘athlon’, the board noted that it meant “a contest” in Greek and stated that the public might associate that word with sports competitions.

It further noted that the element ‘athlon’ was a commonly used suffix, in particular in English, in relation to athletics events, which would make the words ‘decathlon’ and ‘athlon’ “descriptive or allusive” for athletic goods. Consequently, the board found that the applicant had failed to demonstrate any enhanced distinctive character of the earlier mark.

Decathlon disputed the board’s findings, arguing that the word element ‘athlon’ constituted an distinctive element of the mark applied for.

However, in its decision handed down this week, the court agreed that the board was correct to find that the word element ‘athlon’, had “a weak distinctive character”.

The court also found that the visual differences would “counteract the phonetic similarity and, for part of the public, the conceptual similarity resulting from the common word element ‘athlon’ and the concept to which it refers”.

It held that in the light in particular of the weak distinctive character of the element ‘athlon’, of “the dominance of the weak, or even very weak, visual similarity and of the circumstances under which the goods in question are marketed”, that there was no likelihood of consumer confusion.

It found in favour of EUIPO, dismissed Decathlon’s appeal and ordered the company to pay costs.

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