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When an opposed trade mark is held to be similar to an earlier mark, and to cover both identical and similar goods or services, that mark will usually be rejected in relation to all those goods or services, on the grounds that there is a likelihood of confusion. In a relatively unusual decision, the EU General Court has held that, although the marks were similar, their low degree of similarity meant that the opposed mark should only be rejected in relation to the identical – but not the similar – goods and services in question.
Rebel Media Ltd filed an EUTM application for the figurative mark “e-miglia” (shown above left) in relation to a range of goods and services in classes 12, 14, 18, 25, 35 and 41. The application was opposed by Automobile Club di Brescia, based on a number of earlier EUTM registrations for the word mark MILLE MIGLIA covering goods and services in those same classes. Mille Miglia means “thousand miles” in Italian, and is a vintage car race dating back to 1927.
The Court found that all the relevant goods and services were identical, with the exception of the following services, which were only found to be similar:
- “advertising services” and “organisation and managing of trade fairs and exhibitions” (in class 35); and
- “sporting and cultural activities” and “entertainment” (in class 41).
The Court found that the marks were visually similar to a “low degree”, and phonetically similar to a “below average degree”. Since the opposition was based on earlier EUTM registrations, the relevant territory was the whole EU. Even if the marks would be conceptually dissimilar to the Italian-speaking public, the conceptual comparison was assessed as being “neutral” for the non-Italian speaking public, since they would not understand the words “miglia” or “mille”.
On a global assessment, the Court held that, in view of the low visual and phonetic (and neutral conceptual) similarity between the marks, there was only a likelihood of confusion in relation to the relevant identical goods and services, but not the merely similar services above.