30 November 2021
Brands Update – November 2021 – 2 of 3 Insights
Wai Leong Wong sought to register GT RACING as an EUTM for goods in class 18. Sony opposed the application based on (among others) the following earlier figurative trade mark, registered in classes 9, 16 and 28:
The EUIPO Opposition Division rejected the opposition, and so did the Board of Appeal, stating that there was no visual, aural or conceptual similarity between the signs. Sony's earlier mark was so visually different from the letters "GT", consumers would have to engage in a highly imaginative cognitive process in order to perceive the mark as representing the letters G and T. It was more likely that consumers would perceive the mark as an abstract and unitary shape.
On appeal, the General Court agreed. It held that the Board had not made any errors in its assessment of Sony's earlier figurative "GT" mark, concluding that the sign was not visually similar to GT RACING due to its very high degree of stylisation. The Court also confirmed that there was no phonetic or conceptual similarity because the earlier mark would not be immediately associated with the letters "GT".
The case highlights the importance of stylisation to the strength and scope of protection of a registration. Evidence showing how the public perceives the mark would not, it seems, be relevant.
To discuss the issues raised in this article in more detail, please reach out to a member of our Brands & Advertising team.