Beware language issues when deciding on a trade mark

This case is a useful reminder of how important it is to take language issues into consideration when deciding on a trade mark and conducting clearance for it.

On the face of it, if you were doing a clearance for the mark YAMAS, you probably would not immediately consider an earlier mark LLAMA to be problematic….

Here it was an EUTM application for YAMAS for alcoholic beverages (class 33), which was opposed on the basis of the earlier EUTM for LLAMA, also for alcoholic beverages. Since the goods were identical, the only issue was whether or not the marks are sufficiently similar.

For an English speaker, there is no material similarity between the two marks. If this had been a UK application for YAMAS, it would almost certainly have achieved registration without any difficulty.

However, this was an EUTM application, which means that other EU languages also need to be taken into consideration. If two marks are confusingly similar in any EU language, then the later mark cannot be registered as an EUTM.

In Spanish, LLAMA is generally pronounced as "yama". In turn this of course means that in Spanish the two marks are aurally very similar, the only difference being the "S" at the end of YAMAS.

This is exactly the reasoning adopted by the EU General Court, affirming the decisions of the Opposition Division and Board of Appeal. The General Cout found the two marks to have a high degree of aural similarity. Taking into account the fact that drinks are often ordered orally and in locations which are noisy, this aural similarity was not outweighed by the low level of visual and conceptual similarity.

So, English speakers especially, don’t forget to keep other EU languages firmly in mind.

Case Ref; T-15/17