EU court upholds invalidation of PR trademark

The EU General Court has dismissed an appeal brought by a public relations company, confirming the European Union Intellectual Property Office’s (EUIPO) decision to invalidate a figurative trademark which could be confused with an earlier-registered word mark.

The Sixth Chamber of the court delivered the decision on Wednesday, July 11.

In 2014, Link Entertainment filed to register a figurative mark in classes 35 and 41 for services such as advertising and promotional event organisation. The mark featured the word ‘Savory’ in large letters, with ‘Delicious Artists & Events’ in smaller letters underneath.

Link, founded in 2012, offers public relations services, artist representation, and business management to assist event production including concerts and festivals.

After the mark was registered, Sandra García-Sanjuan Machado, a Barcelona resident, asked the EUIPO to declare Link’s mark invalid.

Machado owns the word mark ‘Avory’, registered in 2012, in classes 35 and 41 for advertising and entertainment activities. She claimed that Link’s mark, registered in the same classes, is similar to her earlier-registered mark and causes consumer confusion.

In 2016 the Cancellation Division agreed with Machado and invalidated Link’s trademark. The decision was upheld by the Fourth Board of Appeal in 2017.

The board said the marks shared dominant and distinctive elements, such as the letters ‘a’, ‘v’, ‘o’, ‘r’ and ‘y’. It also said that ‘Avory’ and ‘Savory’ had an above-average phonetic similarity and that it was likely the public would be confused between the two marks.

Link appealed against the decision. It argued that a mark can lead to a consumer thinking about another mark without that consumer believing the marks have the same commercial origin. The company also disputed the board’s finding that ‘Delicious Artists & Events’ occupied secondary importance within the mark.

The General Court said the board was right to determine that ‘Delicious Artists & Events’ occupied a “secondary place” in Link’s mark and that it is “almost unnoticed in the overall impression produced by the sign”.

‘Savory’ dominates the mark, the court said, because of its size and bold type.

The words ‘Delicious Artists & Events’ are descriptive of the services covered by the mark and must be considered “negligible” in the overall impression created by it, the court explained.

The court upheld the finding of “significant visual similarities between the two signs”.

However, it agreed with the board that the additional letter ‘S’ at the start of the dominant word element of Link’s mark distinguishes it from the ‘Avory’ mark, so the overall similarity between the marks is average.

As determined by the board, the court found that the marks are phonetically similar: “the ‘avory’ sound is entirely included in the pronunciation of the contested mark”, the court noted. It also affirmed the board’s finding that the signs cannot be compared conceptually in relation to the non-English speaking public.

The court confirmed that a likelihood of confusion does exist between the marks. It dismissed Link’s appeal and ordered the company to pay the costs.