Beats secures trade mark victory with EUIPO Fourth Board of Appeal

In an interesting decision delivered earlier this month, the EUIPO Fourth Board of Appeal reversed an earlier (rather surprising) decision of the Opposition Division, and found that registration of this sign:

would conflict with the Beats figurative EU trade marks (EUTMs). 

The Opposition Division had in fact excluded that the sign of the applicant and those of the opponent would be similar and that a likelihood of confusion would subsist. 

Background

With an application filed in March 2015 the applicant, Disashop, sough to register the figurative red and white sign above as an EUTM. 

Registration was sought for goods and services in Classes 9 (apparatus for recording, transmission or reproduction of sound or images), 35 (business management, business administration, market research services, export services), and 38 (telecommunication services, in particular mobile telephony, broadcasting of radio and television programmes) of the Nice Classification. 

Beats Electronics (Beats) submitted an opposition in October 2015 in accordance with Article 8(1)(b) and Article 8(5) of the EU Trade Mark Regulation (EUTMR). The earlier registered EUTMs on which the opposition was based were the following: 

EUTM 1

EUTM 2

Beats had registered EUTM 1 for goods and services in Classes 9 (audio and video equipment including audio players, video players, media players, portable media players), 38 (providing online bulletin boards in the fields of media, music, video, film, book and television for the transmission of messages among users), and 41 (nightclub services, dance club services, provision of live entertainment and recorded entertainment) of the Nice Classification. EUTM 2 was for the same goods and services, with the addition of Class 42 (providing an interactive online network website, via electronic communication networks). 

The EUIPO Opposition Division dismisses the opposition 

The Opposition Division held that the applicant’s mark was similar for certain goods and services to Beats’ earlier EUTM registrations, and dissimilar for others. Turning to the comparison of the signs, the Opposition Division reasoned – admittedly quite surprisingly – that the average consumer would perceive them as dissimilar. It thus excluded that any likelihood of confusion would subsist. 

The opposition based on Article 8(5) did not succeed either, as the Opposition Division found that Beats had failed to demonstrate the reputation of any of its earlier marks. 

In May 2018, Beats filed an appeal against this decision, and the Fourth Board of Appeal delivered its decision earlier this month. 

The Fourth Board of Appeal sides with Beats 

The Board reversed the decision of the Opposition Division and found that the opposition was well-founded with regard to both Article 8(1) and Article 8(5) EUTMR.

With particular regard to the assessment of the signs, the Board found that, visually, the signs show clear coincidences: they have an identical structure and composition and a highly similar graphic representation and stylisation. Furthermore, since EUTM 1 does not designate any particular colour, its protection also extends to colour combinations including the combination of red and white. The similarity between the contested sign and EUTM 2 is all the more so in view of their highly similar colour combinations.

The difference between the signs lies in the fact that in the earlier marks the vertical line is placed on the left-hand side and flows into the outer circle, while in the contested sign it is placed on the right-hand side and does not flow into the outer circle. However, the differences between the signs are relatively minor in comparison to their coincidences. The signs are represented in a nearly identical fashion, which gives the impression of a certain symmetry, which is a factor of similarity between two signs.

Although the differing elements of the respective signs obviously have to be taken into account, they are insufficient to counterbalance the high visual similarity created by the common features. This is in particular so when bearing in mind that a consumer normally perceives a mark as a whole and does not proceed to analyse its various details. 

Turning to likelihood of confusion, the Board recalled that the assessment depends on several elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made between the signs, the degree of similarity between the sign and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (Lloyd Schuhfabrik, C-342/97 and Sabel, C-251/95). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they enjoy on the market, enjoy broader protection than marks with a less distinctive character (Canon, C-39/97). 

In light of the foregoing, a likelihood of confusion was found to exist on the part of the relevant public in the EU within the meaning of Article 8(1)(b) EUTMR for all the contested goods and services. 

With regard to Article 8(5), the Board concluded that there was no need to review the claimed enhanced distinctiveness and repute of the Beats trade marks, since the opposition succeeded on Article 8(1)(b).