Dispute over 'GTX' mark ends in loss for Volkswagen
Car maker loses trademark dispute against Polish tech supplier at EU General Court | Judgment held no likelihood of confusion between the two word marks.
Volkswagen, the German-founded car manufacturer, has lost an appeal at the EU General Court in a dispute regarding its ‘GTX’ trademark.
The mark is used for Volkswagen’s new electric SUV range of cars, the ID.4 and ID.5, and ‘GTX’ denotes a model variant with a similar level of sportiness to its GTI petrol predecessor.
Volkswagen had opposed a word mark owned by Polish technology company XTG—which supplies mobile devices, computer components and household appliances—on the grounds of a likelihood of confusion.
After having its opposition rejected by the EU Intellectual Property Office ( EUIPO), and a further appeal dismissed by the Board of Appeal, the eighth chamber of the EU General Court handed down its judgment today, Wednesday 26.
Background
XTG filed an application for its eponymous three-letter mark in September 2019, relating to a range of retail services covering batteries, navigation devices and accumulators (energy storage devices).
In December of that year, Volkswagen filed a notice of opposition to this registration, based on its earlier word mark ‘GTX’.
This opposition was rejected by the EUIPO in June 2021, which Volkswagen appealed two months later. It sought a partial annulment of that decision, “to the extent that it had rejected the opposition as regards ‘retail services in relation to vehicles’, ‘retail services relating to batteries’ and ‘retail services relating to accumulators’ (‘the services at issue’).”
The Board of Appeal dismissed this on the grounds that there was no likelihood of confusion.
Consumer car knowledge
In its final judgment, the EU General Court took into account the “average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect”.
While Volkswagen had not disputed that “the relevant public displays a high level of attention” when purchasing a new car, it did assert that the public’s level of attention is “average” when purchasing second-hand cars, “on the ground that the price of those motorcars may be relatively modest.”
This latter assertion was not necessarily always the case, countered the court, adding that “motorcars, even second-hand ones, are goods which are not purchased regularly and which require a certain financial investment.”
It added that, due to the importance of reliability and safety when buying a car, either new or second-hand, “the relevant public will generally display a high level of attention when purchasing it, with the result that the applicant’s argument must be rejected.”
Visual and phonetic comparisons
The court rejected Volkwagen’s claims that the two word marks carry an “average degree” of visual similarity. It went on to say that the car maker’s point, that “neither of the two signs at issue features additional letters or signs or distinctive logos or a graphical representation, gap or punctuation mark”, does not mean an average visual similarity between those signs.
In addition, the alleged phonetic similarity between the two marks, which Volkswagen claimed was “average”, was contested. The court upheld the Board of Appeal’s finding that this similarity was low, based on the fact that neither of the marks contained vowels, and therefore had to be pronounced as a sequence of single letters.
And Volkswagen’s claim that the two marks contain the same consonants in reverse order was not decisive, said the court, adding that “the presence of the same letters in reverse order does not necessarily create a significant phonetic similarity”.
“Thus, as EUIPO maintains, there are significant phonetic differences between pairs of words such as ‘decaf’ and ‘faced’ or ‘live’ and ‘evil’, even though they consist of the same letters in reverse order,” said the judgment.
Conceptual comparison
Volkswagen had argued that that neither of the two signs at issue has a concept and that, even though part of the relevant public might understand the meaning of the group of letters ‘gt’ in connection with the automobile sector, the earlier mark will be read as a unitary acronym.
But the Board of Appeal had found that the “vast majority” of the relevant public would associate the group of letters ‘gt’ in the GTX mark with grand touring vehicles or parts for that type of vehicle, “with the result that the signs at issue were conceptually different.”
The court maintained that “it is common ground” that the mark ‘XTG’ has no meaning. But it pointed out that in ‘GTX’, the group of letters ‘gt’ is an abbreviation commonly used in the automobile sector to refer to ‘gran turismo’, ‘grand tourisme’ or ‘grand tourer’.
“It follows that the Board of Appeal was right in finding that a significant part of the relevant public would associate the group of letters ‘gt’ in the earlier mark with grand touring vehicles or parts for that type of vehicle…and that therefore, for that part of the relevant public, the signs at issue were conceptually different.
“Furthermore, it is common ground that, for the part of the relevant public which does not associate the group of letters ‘gt’ with grand touring vehicles or parts for that type of vehicle, the earlier mark has no meaning and it is not therefore possible to carry out a conceptual comparison between the signs at issue.”
Distinctive character
Volkswagen had argued that its mark has a normal, or even high, degree of distinctiveness, due to the “super famous” sign GTI, which has been used by the manufacturer continuously since the 1970s and as such had acquired enhanced distinctiveness.
But the court decided that, despite this, “there is nothing to indicate that the same conclusion must be drawn as regards the distinctiveness of the earlier [GTX] mark.”
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories sent like this straight to your inbox.
Today’s top stories
