General Court denies ‘Metaporn’ trademark plea
The EU General Court has denied two appeals from a Hong Kong-based company seeking to register marks involving the word ‘meta’.
Media company Sun Media applied to register ‘Metaporn’ and ‘Metabox’ as EU trademarks (EUTMs) in May 2013, to cover classes 35 (promotional services), 38 (enabling users to access data via the internet), 41 (entertainment services), and 42 (hosting content).
Meta4 Spain, a company that provides software solutions, then opposed the applied-for marks, based on three earlier EUTMs, two Spanish marks and one unregistered Spanish work mark. All of the marks consisted of the word ‘Meta4’.
The European Union Intellectual Property Office’s (EUIPO) Opposition Division upheld the oppositions in part.
While the Opposition Division rejected Meta4’s opposition to the trademark ‘Metabox’ in respect of part of the services in class 41, it upheld the opposition for all the services in classes 35, 38 and 42, and the other services in class 41.
On the opposition to ‘Metaporn’, the Opposition Division refused to register the mark in classes 35, 38 and 42, but authorised the registration of the mark in class 41.
Sun Media filed appeals the following year, but, the Second Board of Appeal of the EUIPO dismissed both.
The Hong Kong-based company appealed, and the General Court handed down two decisions today, January 16.
Sun Media submitted the same three arguments in both appeals.
Its second plea, which was addressed by the court first, claimed that the Board of Appeal had infringed article 75 of Regulation No. 207/2009 because its reasons for the decision were “inadequate and contradictory”.
The General Court disagreed, finding that the Board of Appeal was entitled to take the view that the public will focus on the earlier mark as a whole (because ‘meta’ and ‘4’ have the same degree of distinctiveness), while also holding that the element ‘meta’ will have more influence on the overall impression.
Sun Media also argued that the board erred by confining itself to comparing the applied-for mark with the element ‘meta’, instead of taking into consideration the overall impression of the earlier marks and that there is no likelihood of confusion between the signs at issue due to conceptual differences.
“Accordingly, since the relevant territory is … that of the EU, the existence of a likelihood of confusion for the Spanish-speaking part of the relevant public, because of the visual, phonetic and conceptual similarity between the signs at issue and the identity or the similarity of the services in question, is sufficient to prevent the registration of the mark applied for,” said the General Court.
Sun Media also alleged infringement of the general principles of EU law, but this was dismissed by the court.
The action was dismissed and Sun Media was ordered to pay the costs of the case.
The decisions can be found here ('Metabox') and here ('Metaporn').
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