2024 WIPO IP Judges Forum Informal Case Summary – Fourth Board of Appeal of the European Union Intellectual Property Office [2024]: aqualy (fig.) / AQUAGY (fig.), R 1668/2023-4
This is an informal case summary prepared for the purposes of facilitating exchange during the 2024 WIPO IP Judges Forum.
Session 4
Fourth Board of Appeal of the European Union Intellectual Property Office [2024]: aqualy (fig.)/AQUAGY (fig.), R 1668/2023-4
Date of judgment: May 13, 2024
Issuing authority: Fourth Board of Appeal, EUIPO
Level of the issuing authority: Appellate instance
Type of procedure: Administrative
Subject matter: Trademarks
Applicant/Appellant: COESPA GLOBAL, S.L.
Opponent/Defendant: COVIRAN, S.C.A.
Keywords: Trademarks, Descriptiveness, Weak element, Visual similarity, Phonetic similarity, Conceptual similarity, Likelihood of confusion
Basic facts: On November 17, 2021, COMPANY WATER GROUP, S.L., subsequently COESPA GLOBAL S.L. (the applicant), sought to register the below figurative mark in Class 32 of the Nice Classification:
Following the publication of the application, on February 21, 2022, COVIRAN, S.C.A. (the opponent) filed a notice of opposition against the goods in the contested trademark application, citing the below earlier trademark registered for goods in Class 32 of the Nice Classification:
By a decision of June 7, 2023 (the contested decision), the Opposition Division allowed the opposition, determining that there was a likelihood of confusion.
The applicant filed a notice of appeal against the decision, requesting that it be annulled in its entirety. The statement of grounds of appeal was submitted on October 11, 2023.
The Fourth Board of Appeal considered the following factors while evaluating contested and earlier trademarks:
· Level of attention: The goods in Class 32 target the general public with an average degree of attention.
· The goods are similar.
· Distinctive and dominant elements of the signs: The prefix “aqua” will be perceived as a clear reference to water products, specifically “water” and “mineral water (beverages)” included in the applicant’s list of goods and “isotonic beverages” included in the opponent’s list of goods. The impact of the descriptive element “aqua” on the signs will be marginal. Instead, it will be the end of both marks, namely their suffixes “GY” and “ly”, as well as the particular configuration of the signs, that catch the attention of the relevant public.
· The marks are visually and phonetically similar to a low degree, and the conceptual similarity between the marks is also low.
· The signs are visually, aurally, and conceptually similar to a low degree for the relevant public, due to the shared word element “aqua” being descriptive and having little or no distinctiveness. The impact of the similarity resulting from the presence of said common prefix in the conflicting marks is low and is not decisive in the overall assessment of the likelihood of confusion. Although the contested goods are similar to an average degree, the similarities are not sufficient for the public, which displays an average degree of attention to the goods in question, to confuse the signs. The Board of Appeal, therefore, found no likelihood of confusion between the two marks.
Held: The Fourth Board of Appeal rejected the opposition, thus allowing the registration of the applicant’s trademark.
Relevant holdings in relation to the strength of trademarks, weak elements, and their enforcement:
· When the element in the initial part of a trademark has a low degree of distinctiveness in relation to the goods in question, the relevant public will generally give more weight to the final part of the trademarks, namely the syllables “GY” and “ly”, which are the most distinctive elements.
· Given the weakness of the shared element “aqua”, the reproduction and specific arrangement of the word elements have a certain influence on the perception of the sign as a whole and cannot be ignored in the comparison.
· Despite the signs coinciding in terms of their length and position of the component “aqua”, the differences in the suffixes are significantly important to the overall impression created by the signs. Therefore, the conflicting signs are visually similar to a low degree for the relevant public.
· The common element of the signs, “aqua”, is descriptive of the goods in question and is commonly used in the market for these types of goods. As a result, its mere presence will neither create an association between the signs nor affect the overall impression they convey, including their graphic arrangement, colors, or overall structure.
Relevant legislation: