"EW-WE!" El Corte finds itself in a sticky situation at the General Court
The General Court has overturned a decision of the EUIPO Board of Appeal in which an opposition against an application for a stylised mark for the word "EW" was upheld. The opposition was filed by WE Brand Sàrl based on their EU registration for the word "WE". Details of the two marks and the relevant classes are set out above.
Background
The Opposition Division initially upheld the opposition in respect of all the contested goods except for "walking sticks" in class 18. The applicant appealed the decision to the EUIPO Board of Appeal. The Board of Appeal dismissed the appeal and confirmed the Opposition Division's findings that the signs at issue were visually and phonetically similar with the result that there was a likelihood of confusion on the part of the relevant public (which consisted of average Italian and Spanish-speaking consumers).
General Court Decision
The applicant argued that there was no likelihood of confusion between the marks on the part of the relevant public because there were sufficient visual, phonetic and conceptual differences between the marks.
It also argued that the relevant public should have consisted of English and French-speaking consumers in addition to Italian and Spanish-speaking consumers. The General Court dismissed this argument stating that it was sufficient that a relative ground for refusal existed in part of the relevant territory.
In its assessment on visual similarity the General Court stated that the mere presence of the letters 'W' and 'E' in the signs at issue could not be sufficient to conclude that there was an average degree of visual similarity, as had been found by the lower courts. It also confirmed that because the signs were short, the relevant public were likely to perceive the differences between the signs more clearly. This was consistent with past case law. The Court concluded that this and the fact the letters were not arranged in the same order, along with the different typeface in the applicant's mark meant that there was only a low degree of visual similarity between the marks at issue.
In terms of phonetic similarity the Court confirmed that the relevant public would pronounce the earlier mark as "ve" or "gue", and that the part of the public that has knowledge of English would pronounce the mark as "wi". Conversely the applied for mark would be pronounced: "ev". There was therefore a low degree of phonetic similarity between the marks.
Conceptually the courts found that the mark applied for was meaningless for the relevant public. Therefore the conceptual comparison was neutral for the Italian and Spanish-speaking public which had no knowledge of English. For the part of the public which did have a knowledge of English, the comparison would lead to the conclusion that the signs at issue are not similar, since the earlier mark has a meaning whereas the mark applied for does not.
Therefore despite the similarity or identity of the goods at issue the Court found that the marks did not feature a sufficient degree of visual and phonetic similarity and the conceptual comparison of the signs was found to be neutral, or dissimilar for the part of the relevant public.
As a result, the Court concluded that there was not sufficient likelihood of confusion between the two marks and the opposition was dismissed.
Case Ref: T-241/16
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