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On October 4, 2018, the EUIPO’s board of appeal issued its decision in the appeal lodged by Billa, an Austrian hypermarket operator, against the EUIPO‘s decision refusing registration of its trademark.We must take a brief look at the background to this matter before moving on to the grounds for the ruling. In February 2013, the appellant filed an application to register the “Billa” trademark for goods sold at its establishments (jewelry and jewelry articles, clothing and fashion accessories, games and toys). In July, Billabong, a US company that sells clothing and fashion accessories and articles, filed opposition against registration on grounds of its earlier “BILLABONG” marks. The Opposition Division partially accepted the opposition and refused registration of the “Billa” mark.

The Austrian company then appealed, putting forward the following arguments: (i) the goods for which registration was sought are not similar to the goods for which the BILLABONG trademark was registered, (ii) the signs are not similar, (iii) there is no likelihood of confusion, and (iv) the German Patent and Trademark Office had dismissed that same opposition against the application to register the mark in Germany.

The first point to be assessed was the similarity between the goods and services, e.g., factors such as the nature, purpose, and channels of trade. Here, as the trademarks covered the same classes, discussion centered on the question of the similarity of “games and playthings.” The board of appeal concluded that they were similar, in that the goods were complementary.

For the second point, similarity of the signs, the board considered various aspects: (i) concerning the appellant’s argument that the “Billabong” mark had been registered in upper case (BILLABONG) whereas the “Billa” mark consisted of a single upper case letter with the rest in lower case, the board pointed out that registration protects signs regardless of the font or color used in the application; (ii) both signs are word marks; (iii) the mark applied for consists of the first five letters of the earlier mark,; and (iv) both marks include the syllables bil-la. Therefore, it held that the two marks were visually and phonetically similar.

According to CJEU case law, the likelihood of confusion consists of the risk that consumers will believe that the goods or services have the same business origin and should be assessed globally. The board concluded that there was a likelihood of confusion, because even though the word billabong is meaningful in Australia, most EU consumers are not familiar with it, not even English speakers. That is, the word billabong does not have sufficient distinctive character to expect the public, even if well informed, not to associate the goods linked to each of the signs.

Finally, regarding the appellant’s claim that the German Patent and Trademark Office had dismissed the opposition, the board pointed out that registration of signs as EU trademarks is subject solely to the Trade Mark Regulation and, therefore, that decisions taken by the national offices are not binding on the EUIPO.

Based on these arguments, the board upheld the decision under appeal. Now it only remains to see whether the appeal decision is appealed further to the CJEU.

Author: Esther Ballesteros


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