A recent decision of the EU General Court (Case T‑651/24), included some interesting findings on the relevance of word and figurative elements when comparing complex trade marks, i.e. marks that include both.
The applicant (Eti Gıda Sanayi ve Ticaret AŞ) owns EU and Romanian trade mark registrations in class 30 for the following trade mark:
They applied to invalidate an EU registration in classes 30 and 35 owned by Dr. Oetker RO SRL for the trade mark below, on the grounds of likelihood of confusion and unfair advantage of the earlier trade mark’s reputation.
The application for invalidation was rejected by the Cancellation Division and by the Board of Appeal. The General Court upheld the BoA’s decision.
The applicant argued that the word elements of the trade marks are their respective dominant elements. The Court disagreed, finding that the figurative elements are equal in size to the word elements, they are visually striking and they “clearly contribute to the overall image of each of the marks”. The Court restated the principle that, when comparing trade marks, these must be regarded as a whole.
In the past, the Court had held that word elements tend to be more distinctive than figurative elements, as consumers tend to memorise the former more easily than the latter. The boundaries of this principle were pushed to an extreme in case AC Milan v EUIPO (T-353/20), where word elements were considered dominant even when they were of very low distinctiveness. The case at hand takes a more balanced approach.
Contentious cases are often decided on nuances like these, and what may appear a straightforward case can sometimes reveal itself to be more complex. If you would like advice on how to protect or defend your trade marks, please contact us and one of the attorneys at WP Thompson will happy to advise you.