Today, May 8, the General Court backed Luxottica’s attempt to overturn a decision centring on the applied-for mark ‘Bey Beni’.
Xian Chen applied for the trademark in January 2014 to cover goods within classes 9, 14 and 18.
Soon after, Luxottica opposed the mark based on its ‘Ray-Ban’ figurative trademark, which covers class 9 goods (optical apparatus and instruments)
The EUIPO’s Opposition Division partially upheld Luxottica’s opposition for all products in classes 14 and 18, and for some of the goods in class 9, in particular sunglasses and spectacle frames.
However, the division rejected Luxottica’s opposition for other goods in class 9 such as safety devices and apparatus, instruments and cables for electricity.
Luxottica appealed against the decision of the Opposition Division to reject the opposition based on the ground in article 8(5) of regulation 207/2009 (now article 8, paragraph 5 of the 2017/1001 regulation).
Under article 8(5), an identical/similar trademark should not be registered for dissimilar goods where the earlier trademark has a reputation in the EU or member state concerned and registration would take unfair advantage.
The EUIPO’s Board of Appeal was limited to examining the ground for refusal based on this article and, in June 2016, it dismissed the action.
It concluded that there was only a very small degree of similarity between the signs at issue and that sunglasses and spectacle frames didn’t have sufficient similarity to the goods concerned.
Again, Luxottica appealed against the decision, asking the General Court to annul the contested decision and refuse registration of the mark.
In its submission, Luxottica argued that the goods covered by the applied-for mark are intended for the general public and not solely for professionals.
“Like the applicant, it must be held that certain products concerned, such as batteries, magnets, sockets or switches, may be regarded as everyday products intended for the general public that do not require, at least at the time of their purchase and not their installation, a high degree of attention or the advice of a specialist,” said the General Court.
It concluded that the Board of Appeal had erred in limiting its analysis to professionals.
The General Court went on to add that the appeal board had erred in assessing visual similarity, and that the marks were of average similarity. However, it upheld the board’s finding of a weak phonetic similarity.
While the Board of Appeal considered that there was no relevant link between the marks at issue, the General Court disagreed.
“It is clear … that the Board of Appeal’s assessment is vitiated by errors as regards the relevant public and the degree of similarity of the marks at issue and, consequently, the assessment of the existence of a link between the marks at issue in the mind of the public.”
The decision was annulled and the EUIPO was ordered to pay costs.