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The EU General Court has upheld a decision of the EUIPO Board of Appeal, which found a likelihood of confusion between a “Morgan & Morgan” figurative trade mark registered in class 36 for, primarily, banking services, (the “Registration”) – above right – and a figurative sign incorporating the text “Morgan & Morgan” – above left – for which registration as an EU trade mark (EUTM) was sought for banking, insurance and real-estate services in classes 35, 36 and 45 respectively (the “Application”).
The owner of the Registration opposed the Application under Article 8(1)(b) of the Community Trade Mark Regulation No 207/2009, on the basis that there was a likelihood of confusion between it and the pre-existing Registration. At first instance the Opposition Division rejected the opposition on the grounds that it considered that the shared word element ‘morgan & morgan’ was not the dominant element in either the Application or the Registration and that, therefore, given the visual and phonetic differences between the signs and the higher-than-average level of attention of the relevant public (customers of banking and insurance services), there was no likelihood of confusion.
The Board of Appeal annulled the decision of the Opposition Division and rejected the EU Application in respect of all the services for which registration had been sought. The Board found that there was a likelihood of confusion, in particular a likelihood of association, between the Application and the Registration. In a financial services context, the word element common to both the Application and the Registration, ‘morgan & morgan’, conveyed important information about the respective marks which would, in each case, be identified by consumers over the figurative elements of the marks. Taking into account the distinctive character of the ‘morgan & morgan’ element, the Board of Appeal took the view that, given the nature of the services covered in the application, and the, albeit limited degree of similarity between the Application and the Regulation, the Opponent had established a likelihood of confusion.
The General Court found that the Board of Appeal was correct to hold that there was some visual and phonetic similarity (albeit not to a high degree) between the Registration and the Application. The Court accepted that the words “morgan & morgan” held a secondary role in the Registration in contrast to the much larger figurative element but agreed with the Board of Appeal that the larger figurative element did not obscure the conceptual similarity between the Registration and the Application.
Given the fact that there was some visual, phonetic and conceptual similarity between the Application and the earlier Registration, the Court found that the Board was correct in its finding that there had been right to find that there was a likelihood of confusion between the mark applied for and the earlier mark, given the identity of the services and the degree of similarity between the Application and the Registration.
On the face of it this decision could be viewed as surprising, given the fairly low degree of similarity between the Application and the Registration. However, given the high degree of similarity when considering the services in question and the high value placed on trading names in financial services, the case is a useful reminder that context is crucial in determining likelihood of confusion cases.