On September 20, the General Court of the European Union (hereinafter the “TGUE” or “General Court”) ruled against Group Osborne, S.A. (hereinafter “Osborne”), which had obtained a positive decision related to its claim before the EUIPO (European Union Intellectual Property Office) for the revocation of the registration of the figurative mark “Badtoro” by Jordi Nogués, S.L.
Jordi Nogués, S.L. applied for the registration of said figurative mark “Badtoro” before the EUIPO, in 2010, in the area of textiles, smoking and gift items, beverages, amongst others. In 2011, Osborne filed an opposition to the registration with the EUIPO, based on a likelihood of confusion, as set out in Regulation 207/2009 on the Community trade mark in relation to its trade marks “Toro”, “El Toro” and figurative mark with the letters Toro (Bull) preceded by the figure of a bull.
The EUIPO upheld Osborne’s opposition in it’s entirety, since the goods covered by the conflicting signs were both partially identical and partially similar. In this regard, the EUIPO considered that there is, in fact, a likelihood of confusion on the basis of Article 8 of the European regulation referred to in the previous paragraph. This article establishes that where there is opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if a likelihood of confusion exists on the part of the public in the territory in which the earlier trade mark is protected due to its identity with, or similarity to the earlier trade mark and the identity or similarity to the goods or services covered by the trade marks; the risk of confusion includes the likelihood of association with the earlier trade mark.
In the present case, the General Court sets out a number of reasons why it is not considered that there may be confusion among consumers regarding the conflicting trademarks, such as:
- In the “Badtoro” mark, the figurative element (fantasy image depicting an angry bull) is located above the word element, therefore the word “bull” occupies a secondary position in the mark applied for.
- The word element refers precisely to the representation of a fantasy bull which, given its predominance within the mark applied for and its uniqueness, it is likely to be the element which the relevant public will tend to recognize rather than the animal itself.
- Although the conflicting signs have the common term “bull”, they present numerous differences.
This is to say, the similarities between the marks are scarce at a visual level, but are of an average degree at both the phonetic level and the conceptual level.
The General Court concludes that although the goods which both companies trade are similar, the conflicting signs at issue show only a slight degree of global similarity.
The logical unit derived from the denominative and figurative elements taken together are sufficient to consider that regarding said signs, the relevant public will not establish a link between them.
In this way, the General Court annuls the decision of the EUIPO, allowing Jordi Nogués, S.L. to register their figurative sign to commercialize the goods referred to at the beginning of this article.
However, Osborne has two months to appeal this ruling before the Court of Justice of the European Union.
Hugo Ester
Vilá Abogados
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29th of September 2017
