The Board of Appeal of the EUIPO has ruled in a case regarding an application for the following European trademark applied for classes 9 (apparatus for recording, transmission or reproduction of sound or images), 35 (business management, business administration, market research services, export services), and 38 (telecommunication services, in particular mobile telephony, broadcasting of radio and television programmes):
Against this application, an opposition was filed by Beats Electronics based on the following earlier European trademarks for classes 9 (audio and video equipment including audio players, video players, media players, portable media players), 38 (providing online bulletin boards in the fields of media, music, video, film, book and television for the transmission of messages among users), and 41 (nightclub services, dance club services, provision of live entertainment and recorded entertainment) of the Nice Classification. EUTM 2 was for the same goods and services, with the addition of Class 42 (providing an interactive online network website, via electronic communication networks):
Initially, the EUIPO’s Opposition Division dismissed the opposition stating that there is no possibility for consumer confusion concerning both signs despite the identical and similar goods. The claim for trademarks with reputation by Beats Electronics was dismissed as not proved.
The decision was appealed and the Board of Appeal reversed it finding that the Opposition Division erred in its conclusions.
According to the the Board, both trademarks are similar and can create confusion amongst the consumers. The arguments behind this position were that both signs have similar visual elements as well as colors. The differences are not enough to overcome similarities. What’s more the earlier marks have a reputation on the market which was proved by the owner.
Source: Nedim Malovic, IPKat.