28 November 2019TrademarksSaman Javed

AG sides with Polish sweetmaker in TM appeal

An Advocate General for the  EU General Court has issued an opinion that the General Court erred in an earlier trademark ruling, by failing to take into account all of the arguments put forward by one of the parties.

Earlier  today, November 28, Michal Bobek upheld an appeal by Primart, a Polish confectionery maker, after it argued that the General Court had failed to consider all of its arguments.

In 2015, Primart applied to register a trademark for its name in blue and white text on a red, diamond shaped background. Registration was sought in class 30, for goods including confectionary, chocolate, sorbets and ice creams.

But, the registration was opposed by Bolton Cile España, which said it would infringe its earlier trademark ‘Prima’ which is also registered in class 30 for similar and identical goods.

Although the EU Intellectual Propert Office’s Opposition Division dismissed the opposition, it was later upheld by the EUIPO’s Fourth Board of Appeal. Primart appealed against that decision at the General Court, but in September 2018, the General Court dismissed the action.

Primart said the General Court erred in its decision because it ignored its argument that marketing company Bolton Cile’s earlier trademark has weak distinctive character.

In his opinion, Bobek said the distinctive character of the earlier trademark is an element that must be taken into account when assessing the existence of a likelihood of confusion between two trademarks.

He said that because the General Court had failed to take this argument into account, the appeal should be reheard.

Bobek added that even if the General Court did not ultimately side with Primart on this, the argument still carries “significant weight”.

“Indeed, a likelihood of confusion can also arise with regard to marks with a weak distinctive character,” he said, but added that this was immaterial in the present context.

“At this stage, it simply is not known whether Primart’s arguments are well-founded. More importantly, it is also not known whether, if well-founded, the conclusion reached by the Board of Appeal as to the likelihood of confusion would still hold,” he added.

He also referred to a recent General Court finding that an underestimation of the distinctive character of the earlier mark by the Board of Appeal is sufficient to deem the assessment of the likelihood of confusion as erroneous.

Bobek said the opposite is, “naturally, equally true: an overestimation of the distinctive character of the earlier mark may also have an impact on the assessment of the likelihood of confusion”.

Additionally, Bobek agreed with Primart that the General Court had failed to consider whether or not the word ‘Prima’ has additionally meanings beyond ‘female cousin’ or ‘bonus payment’.

Bobek said that because the General Court did not do this, it also did not consider whether alternative meanings of the word have an impact on the inherent distinctiveness of the earlier trademark mark.

He asked the General Court to dismiss its earlier ruling and re-hear the appeal.

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