Good vibes gone bad?
David Yeomans wonders whether this mark will ever reach registration. B 3 015 552, Laurent Zentz v Valuestore.it SR, EUIPO, 30th January 2019.
B 3 015 552, Laurent Zentz v Valuestore.it SR, EUIPO, 30th January 2019
- A finding of likelihood of confusion is not guaranteed, even if the mark applied for reproduces the earlier mark and the goods at issue are identical
- The fact that the common element was such a small part of the mark applied for was likely key
This case concerns an opposition filed by Laurent Zentz (the Opponent) against EU trade mark application No 1376535 by Valuestore.it SR. The mark contains the wording good vibes only in very small text above the element TOCA.
The opposition was based on a claim of likelihood of confusion with an earlier EU registration of the word mark goodvibes. The Opponent also attempted to run a double-identity claim, which was, not surprisingly, given very short shrift by the Opposition Division (OD).
The application sought registration for clothing, footwear and headgear in class 25, and various games and sporting articles in class 28. The goods applied for were all deemed identical to goods for which the earlier mark was protected, so the outcome of the opposition came down to whether the respective marks were similar enough for there to be a likelihood of confusion, bearing in mind the identity of the goods.
The OD held that, for English-speaking consumers, the phrase “good vibes” would be laudatory of the characteristics of the goods at issue, and was therefore of weak distinctiveness. It thus decided to assess the similarity of the signs from the perspective of the non-English-speaking public, because this would be the most advantageous scenario for the Opponent (since the earlier mark would be considered to have normal, as opposed to weak, distinctiveness).
The marks were held to be visually similar to a low degree on the basis that the TOCA element of the mark applied for dominates it visually. Phonetically, the marks were held to be either dissimilar (to consumers who wouldn’t pronounce the “good vibes” element of the mark applied for on the basis of its position and size within the mark) or similar to only a low degree. A conceptual comparison was not possible, because the marks were held to convey no meaning.
As the goods were deemed identical and the signs somewhat similar (at least visually), the OD went on to examine the likelihood of confusion. Perhaps unsurprisingly in the circumstances, no likelihood of confusion was found. In addition to the differences between the marks, the OD held that some of the goods in class 28 may be relatively expensive, and so would be carefully scrutinised prior to purchase, further reducing any risk of confusion.
This case reminds us that likelihood of confusion is not guaranteed even if the mark applied for reproduces the earlier mark and the goods at issue are identical. Each case is to be assessed on its own merits. In this case, the fact that the common element was such a small part of the mark applied for was likely key; had the good vibes element been more prominent, I expect the outcome would have been different.
If the Opponent doesn’t appeal, then the Applicant will have won this particular battle. However, at the time of writing, its application still faces another ongoing opposition, so it remains to be seen whether this application will ever make it onto the register.
David Yeomans is a Chartered Trade Mark Attorney at Keltie LLP