Abstract

In the context of Art. 8(1)(b) EUTMR, the CJEU has found that the more distinctive the earlier mark, the greater will be the likelihood of confusion (C-251/95, ‘SABEL’, §§ 23-24) and, conversely, that where marks coincide in an element that is weakly distinctive or descriptive, this will not often lead to a likelihood of confusion (C-705/17, ‘HANSSON’, § 55).

However, Art. 1(2) EUTMR, establishes a unitary character for EU trademarks. The CJEU has interpreted this to mean, that – in administrative proceedings - an EUTM can be successfully relied on against another EUTM if the former would be adversely affected only in part of the Union (C-514/06P, ‘ARMACELL’, § 57).

So how can these staples of case-law be reconciled in a territory with an extreme degree of lingual diversity such as the European union? Where a single term maybe descriptive in some parts of the EU, but not in others?

To explore this question, a closer look will be taken of the EUIPO Boards of Appeal decision R 1062/2020-1, which regarded an opposition against the contested sign based on an earlier mark, both of which regarded a range of identical or similar yoga-related services.

Speaker's profile

Thomas Frydendahl is a litigator at the EUIPO Boards of Appeal, representing the Board when its decisions are appealed to the General Court of the European Union Court of Justice. He is also a Member of the Norwegian Boards of Appeal (KFIR) which take decisions on appeals in IP matters. Thomas has experience both from private practice, advising everything from start-ups and global conglomerates in matters relating to IP law and from the public sector as a decision taker both in the Danish Patent-and trademark Office and the EUIPO. He has been a frequent lecturer for lawyers in the Nordic countries and has given several lectures at international conferences on topics related to European trademark law. He is also an Accredited Mediator.