The General Court of the European Union has ruled in a dispute between Decathlon and the Greek company Athlon Custom Sportswear.
Athlon filed an application in 2016 for the following EU trademark in classes 25 (clothing and hats) and 28 (sporting articles and equipment):
Against this application an opposition was filed by Decathlon based on an earlier EU trademark DECATHLON for the same classes of goods.
The EUIPO upheld the opposition in its entirety considering both signs as confusingly similar.
The decision was appealed before the Board of Appeal and the trademark application was limited only to class 25 (athletic clothes and hats). The Board annulled the previous decision stating that there was no enough similarity between the marks.
Decathlon appealed but the General Court upheld the Board’s position.
According to the Court, although there is some phonetic and conceptual similarity this is not enough the marks to be considered confusingly similar.
The reason is that the common element for both signs ATHLON means “contest” in Greek, which can be associated with a sport competition. What’s more Athlon is a commonly used suffix in English in relation to athletic events. On the other hand, Decathlon means a competition in which athletes compete in various sporting events.
Because of that both signs have a low distinctive character. From that point of view, the assessment has to focus on the entire impression created by the signs, which in this case cannot lead to a conclusion for similarity. A low distinctive character cannot be monopolize in the same why as a distinctive sign because everyone has to have the right to use it in the relevant area.
The evidence produced by Decathlon for acquired secondary meaning of their trademark was dismissed by the Court as insufficient.
This case is a good example about the widespread attempt by many companies to use low distinctive elements as trademarks. Although this could sound great from marketing point of view because the brand communicates a particular meaning to the consumers, from legal point of view such sign are either difficult to be protected or at least they have limited scope of protection that does not allow competitors to be restricted to use similar marks too.