This past June 20th, 2023 , the First Board of Appeal published an interesting decision concerning the well-known German registered Jägermeister and the Hungarian mark St. Joseph:
The case came to the Board of Appeal (BoA) following an appeal by Mast- Jäggermeister SE against the decision of the Opposition Division (OD) which rejected their opposition against the registration of the figurative mark St. Joseph based on
Articles 8(1)(b) and 8(5) EUTMR (likelihood of confusion based on similarity and taking advantage of reputation of earlier mark). While the Opposition Division considered that, as there was no similarity between both signs, the necessary prerequisite for the applicability of Articles 8(1)(b) and 8(5) EUTMR was not met, the BoA argued that since there was a low degree of similarity between the marks, it was appropriate to examine the remaining requirements of the submitted opposition.
The BoA concluded that there was similarity (albeit low) between the two signs due to the existence of a certain visual resemblance between them. It found that the signs were identical in terms of their color schema (green, white, gold and orange/red), their basic rectangular shape, their construction and their essential graphic elements and their graphic arrangement (circular green element with a portrait-similar strip above an orange/red banderole).
The BoA also reminds us in the decision that the consumer normally perceives a mark as a whole and does not engage in an analysis of its details. Therefore, although it is true that there may be some elements which are more distinctive and dominant (in this case the word elements Jägermeister and ST. Joseph, were totally different from each other), the comparison between signs must be made by examining them as a whole.
Finally, the decision also cites the judgment of 16/01/2018, T-398/16, COFFEE ROCKS (fig.)/STAR- BUCKS COFFEE (fig.) and others, EU:T:2018:4 pointing out that, depending on the degree of recognition of the earlier mark, even a low degree of similarity between the signs may be sufficient to presume the existence of a link within the meaning of Article
As a result, the Opposition decision has been annulled and the case has been remitted back for further examination of the requirements of Articles 8(1)(b) and 8(5) EUTMR.
We will have to keep an eye on the outcome of this case since it is an interesting situation when traditional trademark comparison criteria melts with those of a trade dress / unfair competition case.
More info on the decision in the EUIPO website here:
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