EU court rules against EUIPO in figurative signs clash

Case involved a French TV network and German tour operator | EUIPO board of appeal found to have erred on several points concerning distinctiveness, visual similarity and consumer confusion.

The  EU General Court has ruled against the European Union Intellectual Property Office ( EUIPO) in a dispute that pitted French TV network  Groupe Canal+ against a German tour operator,  DDR Kultur UG.

The third chamber of the court delivered its  decision today, June 7, finding that EUIPO’s board of appeal erred by failing to attribute sufficient importance to the figurative elements of the signs at issue.

The case arose in July 2019, when a Berlin-based predecessor to DDR filed an application to register the figurative sign of its name, ‘Rave the Planet’.

Covering services in classes 35 and 41 of the  Nice Agreement, the mark spans the ‘publication of printed matter for advertising purposes’; ‘music festival services; providing online electronic publications in the field of music; arranging of musical events; musical entertainment; dance events, and parties’.

In October of that year, the intervener, Groupe Canal+, filed a notice of opposition based on the earlier figurative mark, ‘Planete+’ which, it argued, covered the same services.

In December 2020, the Opposition Division upheld the challenge in respect of all the services referred to by Groupe Canal+. A week later, the German company filed a notice of appeal with the EUIPO against the decision, which was later dismissed by the Second Board of Appeal.

Incorrect findings

However, the third chamber today, June 7, ruled that the board had erred in its finding. First, the board found that the word elements ‘planète’ and ‘planet’, in the earlier mark and in the applied-for mark respectively, had a normal degree of distinctiveness, whereas the figurative elements included in those marks had a less significant impact on the overall impression created by those marks.

Secondly, it found that the symbol ‘+’ in the earlier mark lacked distinctive character and that the word element ‘the’ was less distinctive than the word ‘planet’. However, DDR successfully argued that the board had incorrectly identified the most distinctive elements in the signs at issue.

Today, the court agreed that the Board of Appeal had erred in finding that, in the overall impression created by the applied-for mark, the figurative element of that mark was less important than the word element ‘planet’.

Further, it found that the figurative element of the earlier mark cannot be regarded as functioning merely as a decorative background element for the word element ‘planète’.

Distinctive character

“On the contrary, that figurative element, by virtue of its size and its unusual combination of geometric shapes, but also by virtue of its colours, among which is the particularly striking red colour, is sufficiently unusual to convey to the relevant consumer a message regarding the commercial origin of the services in question,” said the court.

“It must therefore be held that, like the word element ‘planète’ in the earlier mark, the figurative element of that mark has distinctive character.”

It also held that the board should have categorised the degree of visual similarity between the signs at issue as low, and had erred in its finding that the signs would cause consumer confusion.

The court concluded: “Consequently, although the services covered by the marks at issue are identical or similar, the merely low degree of visual similarity and the importance of the visual differences between the signs at issue provide sufficient grounds for ruling out the existence of a likelihood of confusion on the part of the relevant public….”

The court annulled the decision of the board, and ordered the EUIPO to bear its own costs and to pay those incurred by DDR.

Groupe Canal+ will bear its own costs.

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