Date: 27 September 2018
Ew, here we have a GC decision involving two-letter marks, this time confirming the difficulties faced by owners of earlier trade marks that wish to oppose the registration of other marks consisting of the same letters but in a different sequence (El Corte Inglés, SA v EUIPO; T-241/16).
The applicant, Spain’s only remaining department store chain El Corte Inglés, applied to register the stylised two letter mark EW (shown below) as a EUTM for a variety of goods in classes 3, 18 and 25.
The application was opposed by the Dutch fashion chain WE Brand Sàrl on the basis of an earlier word mark WE covering, inter alia, goods in classes 3, 18 and 25.
The Opposition Division took the view that there was a likelihood of confusion between the marks at issue in respect of all of the contested goods, except for the “walking sticks” in Class 18 covered by the EW application. The Board of Appeal confirmed that the Opposition Division’s decision had become final in so far as it had accepted the mark applied for in respect of the “walking sticks” in Class 18, and found that the significant visual and phonetic similarities meant that there would be a likelihood of confusion between the marks on the part of the relevant public, which in the Board’s view consisted of average Italian- and Spanish-speaking consumers. However, the GC annulled the Board of Appeal’s decision.
The mere presence of the letters “e” and “w” in the signs at issue was insufficient support for the conclusion that there was an average degree of visual similarity. According to the GC, when faced with very short signs consisting of only two letters in different order, the relevant public could easily distinguish between the two marks. Consequently, the GC held that there was a low degree of visual similarity between the signs at issue.
As regards the phonetic comparison, the GC pointed out that the relevant public would pronounce the earlier “we” mark as “ve” or “güe”, or even, with regard to English-speaking consumers, as “wi”. As for the “ew” mark, the relevant public could, as the Board of Appeal said, pronounce it as “ev”. What’s more, the fact that the “ew” mark applied for began with a vowel whereas the earlier “we” mark began with a consonant created a difference in the pronunciation of the signs at issue. Consequently, the GC held that the signs at issue were phonetically similar to a low degree, or even different for English-speaking consumers.
As regards the conceptual comparison, the GC agreed with the Board of Appeal’s finding that that the “ew” mark applied for was meaningless for the relevant public.
It followed that the overall impression made on the relevant public by the signs at issue wasn’t capable of giving rise to a likelihood of confusion, even though the goods at issue were identical or similar. Accordingly, the GC annulled the Board of Appeal’s decision and ordered a costs award in favour of El Corte Inglés, SA.
This case illustrates the criteria applied by the GC when assessing two-letter marks and the challenges that trade mark owners face when enforcing their two-letter marks in the EU.