The EUIPO Board of Appeal has ruled in a case where the following EU trademark application was filed in class 28 – games, playthings, and decorations for Christmas trees:
Against this mark an opposition was filed by Lego based on earlier trademarks LEGO and LEGOLAND in class 28.
The EUIPO refused the application. The Applicant appealed stating that there was no similarity because of the fact that the first part of their mark consists of the word LEGNO which means WOOD in Italian. This in turn creates meaning of toys made out of wood. Due to this conceptual difference with the earlier signs there was no possibility for consumer confusion.
The Board of Appeal disagreed. The fact that the word Legno has a meaning in Italian was not enough to overcome the similarity. The reason is that most of the consumers in the EU would not understand that word at all.
From visual and phonetic point of view the signs are similar for identical and similar goods. What’s more, both earlier marks have proved reputation in the EU market for many years.
From that perspective LEGNOLAND can be confusingly similar to LEGO and mostly to LEGOLAND.
This case is very indicative that you cannot rely always on the fact that your brand name has a meaning in one language for the purpose of differentiation with other marks, especially in the case of EU trademarks. Sometimes this is not enough particularly in the case of well-known and famous trademarks.