When can number 5 be crucial for an EU trademark?

The General Court of the European Union has ruled in case T‑ 639/19, Sánchez Romero Carvajal Jabugo, S. A. U v EUIPO.

The case concerns an attempt for registration of a European trademark for ‘5Ms MMMMM’ in class 29 – meat; poultry, not live; game; meat extracts; cured sausages; processed meat products; meat preserves; charcuterie.

Against this application an opposition was filed based on an earlier EU mark for ‘5J’ in class 29 – meat, fish, poultry and game; meat extracts.

The EUIPO upheld the opposition concluding that there is a risk the new mark to take unfair advantage of the reputation of the earlier mark.

The decision was appealed. The Board of Appeal overturned it, stating that there is no enough similarity between the signs despite the fact that they share identical goods. Visually and phonetically the similarity is low, whereas from a conceptual point of view there is no similarity at all.

The decision was appealed again. The General Court disagreed with the Board of Appeal’s findings. According to the Court there is a low level of visual similarity because of the different letters and figurative elements as a whole. However, there is an average phonetic similarity not low.

The signs share the number 5 placed at the beginning of their word elements, to which consumers generally pay greater attention and which plays a decisive part in the phonetic assessment of the marks. What’s more the pronunciation of number 5 is longer than the letter J or the combination MS.

The signs have a high degree of conceptual similarity because they both convey a common concept, namely that of the combination of a number and a letter, which is a consonant represented in capital
letter.

Based on this the Court annulled the Board of Appeal’s decision and upheld the opposition.

Source: Alicante news.