A recent EUIPO decision adheres to a long line of precedent which holds that conceptual dissimilarity is not sufficient to overturn an average degree of visual and aural similarity been two trade marks, even where the average consumer is highly attentive.
What happened?
The EUIPO has held that the mark Whatsabank is confusingly similar to the mark WHATSAPP for similar services. The case is a reminder of the weight that the EUIPO places on the visual and aural similarities between trade marks in assessing the likelihood of confusion. Where a mark shares a reasonable number of letters with an earlier mark, a likelihood of confusion is usually found. That was the case in this opposition, even though the marks were not conceptually similar and the average consumer was deemed highly attentive. Key points in the case were:
- The EUIPO considered that the trade marks were visually and aurally similar to an average degree because they replicated the same six letters in their entirety and in the same order.
- It based its decision on the point of view of the average Polish consumer, with a high degree of attention, for whom the marks would not be conceptually similar.
- This case reinforces the difficulties in defending an application from opposition even where (from an English-speaking consumer's perspective, at least) there are conceptual differences between the marks and a highly attentive average consumer.
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In October 2018, Stanislav Tkachenko applied to register the word mark "Whatsabank" as an EUTM for the administration of loyalty programmes in class 35 and various electronic payment card services in class 36.
In January 2021, Whatsapp LLC opposed the application based on its UK and EU trade mark registrations for WHATS and WHATSAPP in a wide variety of classes, including classes 35 and 36. Whatsapp based its opposition on Article 8(1)(b) of the EUTMR, alleging a likelihood of confusion with its prior rights, and on Article 8(5) EUTMR, claiming a reputation in the WHATSAPP mark and a risk of unfair advantage and detriment to the reputation and distinctive character of that mark.
In its submissions, Whatsapp contented that WHATS is the dominant and distinctive element of the Whatsabank mark, given that consumers would understand ABANK to be descriptive and non-distinctive in respect of loyalty and payment card services.
It also argued that its earlier marks WHATS and WHATSAPP are highly visually, aurally and conceptually similar to the Whatsabank mark, submitting that the word "Whats" would be read, heard and understood in both marks in identical ways. It also argued that the word "Whats" plays an independent distinctive role in both marks, which the average consumer would focus on.
It also submitted various arguments on the identity/high degree of similarity between the services at issue and contended that the average consumer of those services is a consumer based in the European Union at large, with an average degree of attention.
The applicant for Whatsabank did not file any observations in reply.
The EUIPO took its decision based solely on the Opponent's registration of WHATSAPP in the EU, under Article 8(1)(b) of the EUTMR, for reasons of procedural economy.
The EUIPO held that the marks were only visually and aurally similar to an average degree - while the word BANK is non-distinctive in respect of the opposed services, it cannot be disregarded in the comparison of the signs. There was no conceptual similarity between the marks since the word WHATSAPP has no perceivable meaning. Although the word BANK would be understood, it is a weak component and will have a limited impact on the conceptual comparison.
The EUIPO agreed with Whatsapp on the identity of the services at issue but held that the average consumer is one who pays a high degree of attention to the offering of loyalty schemes and financial services.
Despite the conceptual dissimilarity between the signs, and the high degree of attention paid by the average consumer to the services at issue, the EUIPO decided that there was a likelihood of confusion between WHATSAPP and Whatsabank.
This article was first published in the May issue of CITMA Review, the journal of the Chartered Institute of Trade Mark Attorneys (CITMA). For more information on CITMA, please visit citma.org.uk.
