13 March 2018Trademarks

EU court puts Hotelbeds’ TM to bed

The EU General Court has put a travel company’s trademark appeal to bed by affirming the European Union Intellectual Property Office’s (EUIPO) finding that ‘Guidego’ is likely to be confused with an already registered mark.

The Third Chamber of the General Court delivered judgment today, March 13.

In June 2014, travel company Hotelbeds Spain applied to register a figurative trademark featuring the words “guidego” and “what to do next” at the EUIPO, covering classes 39, 41, and 43, for services including travel arrangements, entertainment activities, and reservations.

GuidiGO Europe, a travel tour organisation, opposed the application based on its prior registered word mark ‘GuidiGO’ (EU trademark number 9,936,584), which is registered in classes 9, 35, 38, 39, 41, 42, and 45 for various travel-related services.

The EUIPO’s Opposition Division found that there was a likelihood of confusion between the applied-for mark and ‘GuidiGO’ in January 2016. The decision was affirmed by the Fourth Board of Appeal in March 2017.

Hotelbeds then appealed against the decision to the General Court.

Affirming the board’s reasoning, the court said that the size and position of “guidego” on the applied-for mark made it the dominant element for consideration. The additional words “what to do next” on the applied-for mark are in small text, and the court noted that consumers frequently shorten long signs.

The General Court confirmed that a high degree of phonetic similarity exists between the marks; “guidego” or “GuidiGO’ are “not existing words and are pronounced almost identically by the French-, Finnish- and Spanish-speaking part of the relevant public”.

That “GuidiGO” is a “fanciful term” and “guidego” is a combination of two English words does not alter this phonetic assessment, added the court.

Although the signs are conceptually similar for the English-speaking public, the term ‘guide’ may not be understood by others in the EU so the conceptual comparison between the marks is neutral, according to the court.

It said that the board erred in finding that “guidego” would be understood as a single word as the colour contrast between “guide” and “go” made it possible to distinguish them.

However, the fact that consumers can distinguish between the two words doesn’t mean that they will “necessarily be able to understand them”, the court added.

The General Court dismissed the appeal and ordered Hotelbeds to pay the costs.

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