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The General Court has dismissed an appeal by an applicant for the figurative mark (above left) against a partially successful opposition based on the earlier EU trade mark I PREFERITI (above right).
The owners of the I PREFERITI mark opposed the PREFERISCO application on the basis that the specifications for both the mark, and the application, covered classes 29, 30 (food products) and 32 (beverages) and the marks were sufficiently similar that there would be a likelihood of confusion.
The Opposition Division upheld the opposition and rejected the EU trade mark application in its entirety. The applicant appealed and the Second Board of Appeal partially upheld the appeal, annulling the Opposition Division’s decision in respect of the goods contained in Class 32 only, as a result of the differences between the goods. In this case the application sought to cover non-alcoholic beverages, whereas the earlier mark enjoyed protection in respect of alcoholic beverages.
The Applicant appealed to the General Court, arguing that the registration of the PREFERISCO mark applied for should have been permitted in its entirety, including for classes 29 and 30.
The General Court found that the marks were similar overall, particularly given the common element ‘preferi’ and the fact that the graphic elements of the mark applied were not particularly distinctive. The Court also felt that the Board of Appeal did not underestimate the significance of the element ‘i’ at the beginning of the earlier mark. It recognised, that the element ‘i’ was not negligible. However, it correctly concluded that the element ‘i’, which is composed of a single letter and is not particularly distinctive, would not decisively influence the overall impression produced by that sign, the visual impression of the earlier mark being dominated by the element ‘preferiti’.
The General Court also upheld the Board of Appeal’s assessment that, irrespective of the different pronunciation rules applicable in different parts of the relevant territory (Bulgaria, Lithuania and Hungary), the pronunciation of the signs were similar in the syllables ‘pre’ and ‘fe’ and the pronunciation of the letters ‘r’ and ‘i’, which appeared identically in both signs in the same position. The General Court concluded that there was no evidence to suggest that the shared element ‘preferi’ would not be pronounced in substantially the same way in the languages of the three key countries.
In the light of the similarities between the marks and the fact that they related to similar and identical goods, the General Court concluded that the EUIPO Board of Appeal had been right to rule that there was a likelihood of confusion. Accordingly the decision was upheld and the appeal dismissed entirely. The PREFERISCO mark application will proceed to registration in respect of class 32 only.