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9 October 2018Trademarks

Victory for Billabong in trademark dispute over ‘Billa’

The European Union Intellectual Property Office (EUIPO) has sided with clothing brand Billabong in a dispute over a supermarket’s trademark application for ‘Billa’.

The EUIPO’s Fourth Board of Appeal delivered its billabong (pdf) on Thursday, October 4.

Austrian supermarket chain Billa applied to register ‘Billa’ as a trademark covering metals and jewellery, leather goods, clothing, games, toys, and advertising materials (classes 14, 18, 25, 28, and 35) in 2013.

In the same year, Billabong filed an opposition to the mark.

Billabong has since been acquired by US-based Boardriders, an action sports and lifestyle company which owns brands such as Billabong, Quicksilver, and Roxy. Following the 2018 acquisition of Billabong, Boardriders does business with wholesale customers in more than 110 countries.

In its opposition, Billabong relied on the earlier-registered ‘Billabong’ mark (4,474,268). Registered in 2007, the mark covers jewellery, leather goods, clothing, and sporting goods in classes 14, 18, 25, and 28.

‘Billabong’ is also registered in class 35 (4,497,202) to cover the sale of these goods, including publicity materials and retail services.

In 2017, the Opposition Division upheld the opposition in relation to all goods and services.

It found that Billabong had shown genuine use of its earlier trademarks with respect to clothing and sporting goods, among other products, and that similarities exist between the goods covered by the earlier marks and those covered by the applied-for mark.

The Opposition Division said that games and toys, which were cited in the applied-for mark, were dissimilar to any of the goods covered by the ‘Billabong’ marks. However, as toys could refer to sporting products such as scooters or roller skates, the goods in class 28 cover a market sector related to the field that Billabong operates in.

As such, there is a sufficient link to enable the applied-for mark to take unfair advantage of the reputation of the earlier-registered marks, the Opposition Division said.

Billa appealed against the decision.

The supermarket chain argued that no likelihood of confusion exists between the marks, as the ‘bong’ element characterises the earlier-registered marks and because the Opposition Division wrongly dissected the ‘Billabong’ marks in coming to its decision.

Last week, the Board of Appeal said that Billa’s appeal “is not well founded” and that the Opposition Division was correct to find that a likelihood of confusion exists in respect of all goods and services covered by the applied-for mark.

“Visually, the contested sign consists of the identical first five letters of the nine-letter earlier signs,” the board noted.

As ‘Billa’ is “identical to the beginning and first half” of the earlier marks, there exists a likelihood of confusion, the board concluded.

The board dismissed Billa’s appeal, and ordered the supermarket chain to pay the €550 ($631) cost of the appeal proceedings incurred by Boardriders.

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