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It is becoming increasingly popular for brands to omit letters,
commonly, but not always, vowels, from trade marks with the likes
of Nike registering ‘snkrs’ and Burberry registering
‘BRBY’. However, the case below highlights that, despite
this market trend, earlier right holders of full-length words may
not necessarily be able to oppose applications for shortened
versions of their marks and it is likely earlier rights holders
will need to provide sufficient evidence of consumer awareness.

The General Court has issued a decision rejecting an appeal
against the First Board of Appeal’s (the
“BoA“) decision to reject an opposition
to EU designation of IR No. 1566912 for the mark BTFY.

In April 2021, Tamasu Butterfly Europa GmbH (the
“Opponent“) filed an opposition to the
EU designation of IR No. 1566912 for the mark BTFY (the
“Application Mark“) in the name of Domu
Brands Ltd (the “Applicant“) on the
basis of its EU Trade Mark Registration No. 17932135 BUTTERFLY (the
“Earlier Mark“) and its German trade
names Butterfly and BTY. The opposition was directed at goods and
services in Classes 18, 21, 24, 25, 28 and 35 and the Opponent
relied on a likelihood of confusion under Article 8(1)(b) EUTMR,
reputation under Article 8(5) EUTMR and its unregistered rights
under Article 8(4) EUTMR.

Grounds of opposition

The BoA found the respective marks BUTTERFLY and BTFY to be
visually, phonetically and conceptually dissimilar.

On appeal to the GC, the Opponent argued that the BoA had
overlooked the fact that the term ‘BTFY’ was an
abbreviation of the term ‘BUTTERFLY’, where the average
consumer would automatically add the missing letters and perceive
the mark as an abbreviation of ‘BUTTERFLY’. It relied on
this argument for the visual, phonetic and conceptual assessments
of the Application Mark and the Earlier Mark. However, it was only
relevant in relation to the conceptual analysis.

Visually, the GC held that identity in the first and last
letters of the respective marks was not sufficient for a finding of
visual similarity, given that when the marks were assessed as a
whole, they were substantially dissimilar.

Phonetically, the GC referred to case law setting out that a
large proportion of abbreviations or acronyms are pronounced letter
by letter. The GC agreed with the BoA that the Application Mark
would be pronounced letter by letter, in four syllables, and that
the pronunciation of the respective marks would be dissimilar.

The conceptual assessment was based on the perception of the
English-speaking part of the relevant public, which understood the
meaning of the term ‘BUTTERFLY’ to mean an insect with
large colourful wings and a thin body. The Opponent made reference
to the trend of omitting vowels from dictionary words and that the
relevant public was aware that these marks were abbreviated forms
of dictionary words. However, the GC held that, in essence, the
Application Mark was not the result of the omission of the vowels
of the word ‘BUTTERFLY’ because it would expect the
remaining term to be ‘BTTRFL’ or ‘BTTRFLY’ and not
‘BTFY’. Interestingly, the GC held that even if the term
‘BTFY’ was the result of the omission of the vowels of the
word ‘BUTTERFLY’, it would not be sufficient to establish
that the relevant public with an average level of attention
perceived the term ‘BTFY’ as being an abbreviation of the
word ‘BUTTERFLY’. The Applicant submitted evidence to
demonstrate the term ‘BTFY’ was perceived as the word
‘BUTTERFLY’, but the GC held that it did not demonstrate
that a sufficient part of the relevant public used the
abbreviation. The term ‘BTFY’ was considered meaningless
rendering the respective marks conceptually dissimilar.

As the respective marks were considered dissimilar, the GC
confirmed that the BoA was correct to find that one of the
conditions necessary for Articles 8(1)(b) and 8(5) EUTMR was not
fulfilled and rejected the opposition on these grounds.

This was also the case in relation to Article 8(4) EUTMR because
the Opponent relied on German law which required a finding of
similarity between the trade name Butterfly and the Application
Mark. The Opponent failed to show that use of the trade name BTY in
the course of trade was of more than mere local significance and
this ground of opposition was also rejected.

Conclusion

The GC dismissed the appeal in its entirety and ordered the
Opponent to bear its own costs and those incurred by the
Applicant.

Comments

This case highlights that earlier rights holders cannot always
broaden the scope of enforceability of their earlier word marks to
later marks which have omitted letters, commonly vowels, but
retain, in order, other letters. Enforcement against marks which
have omitted letters is likely to require evidence of consumer
awareness and that they are abbreviations used by a sufficient part
of the relevant public.

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