24 January 2019Trademarks

EU court invalidates “Big Sam” sportswear trademark

The EU General Court has ruled in favour of the  European Union Intellectual Property Office (EUIPO) in a trademark registration appeal brought by the owner of German-based  Big Sam Sportswear Company.

The decision was issued today, January 24.

Ercan Ilhan, resident of Istanbul, Turkey, filed to register a logo bearing the name of his Big Sam Sportswear Company with the EUIPO in 2006. The mark, covering class 25 for various items of clothing, was registered in 2009.

Another German company, Time Gate, sought to have the mark invalidated in 2014, claiming that it was likely to cause confusion with its “Sam” mark. Time Gate’s mark was registered in 1991 in class 25 - clothing, headwear and footgear.

The cancellation division of the EUIPO invalidated Ilhan’s “Big Sam” mark in its entirety in 2016, a decision which was upheld by the EUIPO’s board of appeal the following year.

Ilhan brought the case to the EU General Court, arguing that the appeals board had erred in finding that there was a likelihood of confusion between the two marks.

In its  ruling, the court affirmed the appeals board’s finding that, even though the levels of phonetic and visuals similarity between the marks were low, there remained a “conceptual similarity” which could confuse the relevant public.

Ilhan argued that consumers would associate the phrase “Big Sam” with the dog on his company’s logo, and therefore that his mark bore little conceptual similarity with the “Sam” mark.

The court, however, ruled that, as consumers buying items of clothing have no more than an “average level of attention”, part of the relevant public was “likely to wrongly identify the contested mark as a sub-brand of the earlier mark”.

Ilhan had also argued that the appeals board should have stated its reasons for deviating from a decision of a regional court in Frankfurt, Germany, which also ruled on a dispute over the two marks.

The general court reiterated that although it is “desirable for EUIPO to take into account decisions of national authorities”, it is not bound by these decisions.

Costs were awarded to Time Gate and the EUIPO.

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