Lewis Silkin are most popular: <\/p>\n
<\/p>\n
\n <\/ul>\n
It is becoming increasingly popular for brands to omit letters,
\ncommonly, but not always, vowels, from trade marks with the likes
\nof Nike registering ‘snkrs’ and Burberry registering
\n‘BRBY’. However, the case below highlights that, despite
\nthis market trend, earlier right holders of full-length words may
\nnot necessarily be able to oppose applications for shortened
\nversions of their marks and it is likely earlier rights holders
\nwill need to provide sufficient evidence of consumer awareness.<\/p>\n
The General Court has issued a decision rejecting an appeal
In April 2021, Tamasu Butterfly Europa GmbH (the
Grounds of opposition<\/strong><\/p>\n The BoA found the respective marks BUTTERFLY and BTFY to be
On appeal to the GC, the Opponent argued that the BoA had
Visually, the GC held that identity in the first and last
Phonetically, the GC referred to case law setting out that a
The conceptual assessment was based on the perception of the
As the respective marks were considered dissimilar, the GC
This was also the case in relation to Article 8(4) EUTMR because
Conclusion<\/strong><\/p>\n The GC dismissed the appeal in its entirety and ordered the
Comments<\/strong><\/p>\n This case highlights that earlier rights holders cannot always
The content of this article is intended to provide a general
\nagainst the First Board of Appeal’s (the
\n“BoA<\/strong>“) decision to reject an opposition
\nto EU designation of IR No. 1566912 for the mark BTFY.<\/p>\n
\n“Opponent<\/strong>“) filed an opposition to the
\nEU designation of IR No. 1566912 for the mark BTFY (the
\n“Application Mark<\/strong>“) in the name of Domu
\nBrands Ltd (the “Applicant<\/strong>“) on the
\nbasis of its EU Trade Mark Registration No. 17932135 BUTTERFLY (the
\n“Earlier Mark<\/strong>“) and its German trade
\nnames Butterfly and BTY. The opposition was directed at goods and
\nservices in Classes 18, 21, 24, 25, 28 and 35 and the Opponent
\nrelied on a likelihood of confusion under Article 8(1)(b) EUTMR,
\nreputation under Article 8(5) EUTMR and its unregistered rights
\nunder Article 8(4) EUTMR.<\/p>\n
\nvisually, phonetically and conceptually dissimilar.<\/p>\n
\noverlooked the fact that the term ‘BTFY’ was an
\nabbreviation of the term ‘BUTTERFLY’, where the average
\nconsumer would automatically add the missing letters and perceive
\nthe mark as an abbreviation of ‘BUTTERFLY’. It relied on
\nthis argument for the visual, phonetic and conceptual assessments
\nof the Application Mark and the Earlier Mark. However, it was only
\nrelevant in relation to the conceptual analysis.<\/p>\n
\nletters of the respective marks was not sufficient for a finding of
\nvisual similarity, given that when the marks were assessed as a
\nwhole, they were substantially dissimilar.<\/p>\n
\nlarge proportion of abbreviations or acronyms are pronounced letter
\nby letter. The GC agreed with the BoA that the Application Mark
\nwould be pronounced letter by letter, in four syllables, and that
\nthe pronunciation of the respective marks would be dissimilar.<\/p>\n
\nEnglish-speaking part of the relevant public, which understood the
\nmeaning of the term ‘BUTTERFLY’ to mean an insect with
\nlarge colourful wings and a thin body. The Opponent made reference
\nto the trend of omitting vowels from dictionary words and that the
\nrelevant public was aware that these marks were abbreviated forms
\nof dictionary words. However, the GC held that, in essence, the
\nApplication Mark was not the result of the omission of the vowels
\nof the word ‘BUTTERFLY’ because it would expect the
\nremaining term to be ‘BTTRFL’ or ‘BTTRFLY’ and not
\n‘BTFY’. Interestingly, the GC held that even if the term
\n‘BTFY’ was the result of the omission of the vowels of the
\nword ‘BUTTERFLY’, it would not be sufficient to establish
\nthat the relevant public with an average level of attention
\nperceived the term ‘BTFY’ as being an abbreviation of the
\nword ‘BUTTERFLY’. The Applicant submitted evidence to
\ndemonstrate the term ‘BTFY’ was perceived as the word
\n‘BUTTERFLY’, but the GC held that it did not demonstrate
\nthat a sufficient part of the relevant public used the
\nabbreviation. The term ‘BTFY’ was considered meaningless
\nrendering the respective marks conceptually dissimilar.<\/p>\n
\nconfirmed that the BoA was correct to find that one of the
\nconditions necessary for Articles 8(1)(b) and 8(5) EUTMR was not
\nfulfilled and rejected the opposition on these grounds.<\/p>\n
\nthe Opponent relied on German law which required a finding of
\nsimilarity between the trade name Butterfly and the Application
\nMark. The Opponent failed to show that use of the trade name BTY in
\nthe course of trade was of more than mere local significance and
\nthis ground of opposition was also rejected.<\/p>\n
\nOpponent to bear its own costs and those incurred by the
\nApplicant.<\/p>\n
\nbroaden the scope of enforceability of their earlier word marks to
\nlater marks which have omitted letters, commonly vowels, but
\nretain, in order, other letters. Enforcement against marks which
\nhave omitted letters is likely to require evidence of consumer
\nawareness and that they are abbreviations used by a sufficient part
\nof the relevant public.<\/p>\n
\nguide to the subject matter. Specialist advice should be sought
\nabout your specific circumstances.<\/p>\n","protected":false},"excerpt":{"rendered":"Lewis Silkin are most popular:
within Intellectual Property, Cannabis & Hemp and Tax topic(s)
in United…\n","protected":false},"author":2,"featured_media":42633,"comment_status":"","ping_status":"","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[3,4],"tags":[748,393,4884,1144,712,16,15,1764],"class_list":{"0":"post-521944","1":"post","2":"type-post","3":"status-publish","4":"format-standard","5":"has-post-thumbnail","7":"category-uk","8":"category-united-kingdom","9":"tag-britain","10":"tag-england","11":"tag-great-britain","12":"tag-northern-ireland","13":"tag-scotland","14":"tag-uk","15":"tag-united-kingdom","16":"tag-wales"},"share_on_mastodon":{"url":"https:\/\/pubeurope.com\/@uk\/115423016942407598","error":""},"_links":{"self":[{"href":"https:\/\/www.europesays.com\/uk\/wp-json\/wp\/v2\/posts\/521944","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.europesays.com\/uk\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.europesays.com\/uk\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.europesays.com\/uk\/wp-json\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/www.europesays.com\/uk\/wp-json\/wp\/v2\/comments?post=521944"}],"version-history":[{"count":0,"href":"https:\/\/www.europesays.com\/uk\/wp-json\/wp\/v2\/posts\/521944\/revisions"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/www.europesays.com\/uk\/wp-json\/wp\/v2\/media\/42633"}],"wp:attachment":[{"href":"https:\/\/www.europesays.com\/uk\/wp-json\/wp\/v2\/media?parent=521944"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.europesays.com\/uk\/wp-json\/wp\/v2\/categories?post=521944"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.europesays.com\/uk\/wp-json\/wp\/v2\/tags?post=521944"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}