Victory for El Corte Inglés at EU court

The EU General Court has today ruled in favour of Europe’s biggest department store group, El Corte Inglés, in its appeal against an opposition decision on the retailer’s trademark application.

The court’s Seventh Chamber delivered judgment today, May 4.

El Corte Inglés, based in Madrid, filed an application to register the figurative sign ‘EW’ with the European Union Intellectual Property Office (EUIPO) in 2013. The goods covered included laundry products, leather goods and clothing in classes 3, 18 and 25.

Luxemburg-based WE Brand Sàrl, a fashion brand with more than 200 shops across Europe, filed an opposition to the mark on the grounds that it would be confused with its own earlier registered word mark ‘WE’.

That mark was registered in 2010 and covers a range of goods, including cosmetics, leather goods and clothing in classes 3, 18 and 25.

In 2015 the Opposition Division upheld WE Brand’s opposition with the exception of walking sticks in class 18 of the applied-for mark, as the earlier mark does not cover such goods. The EUIPO’s Second Board of Appeal upheld the decision in 2016 and El Corte Inglés appealed to the EU General Court.

According to the EUIPO the marks have significant visual and phonetic similarities. A likelihood of confusion would therefore exist for the relevant public, which consists of average Italian and Spanish-speaking consumers.

At the General Court, El Corte Inglés argued that there is no likelihood of confusion due to “sufficient” differences between the signs. For example, it said the earlier word mark lacks the phonetic and visual complexity of the applied-for mark.

El Corte Inglés claimed the pronunciation of the two marks is different, as the earlier one begins with a consonant (‘W’) and the applied-for mark with a vowel (‘E’). It accused the EUIPO of focusing its assessment “excessively on the fact that the marks consisted of a single syllable”.

The court said that in the context of short signs, the public is likely to perceive differences “more clearly”, and the different order of the ‘W’ and ‘E’ in the marks means there is a low degree of visual similarity between them. However, it upheld the EUIPO’s finding that the conceptual similarity between the marks is neutral.

As argued by El Corte Inglés, the court agreed that the different letters create a difference in the pronunciation of the signs, contrary to the EUIPO’s assessment. Overall the court said the marks are phonetically similar to a low degree.

“It must be held that the board of appeal erred in finding that the signs at issue exhibited significant visual and phonetic similarities,” the court said.

The court noted that the letter ‘w’ has limited use in Spanish and Italian. Its position in the signs will therefore attract the attention of the relevant public, meaning the overall impression of the marks “cannot be capable of giving rise to a likelihood of confusion” and that the board erred in finding otherwise.

The court annulled the EUIPO’s decision and ordered it and WE Brand to pay the costs incurred by El Corte Inglés.

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