In 2011 EFE SA, based in Paris, filed an application with the Benelux Office for Intellectual Property (BOIP) for the registration of the following logo:

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The European Commission opposed this application on the basis of a prior trademark registration for the following logo:

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BOIP was tasked with deciding whether there was similarity between the logos. In order to do so, it considered the logos' visual, aural and conceptual similarities.

Conceptual comparison

The prior logo consisted of 12 stars in a circle with no specific meaning for the public. BOIP then considered the elements of the disputed logo. It concluded that from the text “International Faculty for Executives”, it was apparent that it represented a faculty for managers, for which 'IFE' was the acronym. In this logo the stars had no specific significance for the public apart from possibly being regarded as a quality classification (eg, as for hotels). In that case, the stars would be seen to represent quality rather than a distinctive feature. On this basis, the BOIP decided that the logos were conceptually different.

Visual comparison

The BOIP did not consider the logos to be visually similar, as there were clear differences, including the colour of the stars, the dominant element 'IFE' and the additional words below it, as well as the blue background.

Aural comparison

According to the BOIP, the logos were aurally different, because the prior logo had no word elements and the public would probably pronounce the disputed logo as 'IFE'.

Decision

The BOIP concluded that the overall impressions of both trademarks were sufficiently different.

The European Commission also claimed that its logo was a generally well-known symbol which required wide protection. The plaintiff referred to Article 6ter of the Paris Convention, which protects emblems of European institutions. This argument was rejected by the BOIP since the fact that a certain emblem is protected does not by itself mean that it is a generally well-known logo. Moreover, such emblem may not be dissected by choosing certain elements thereof to which this wide protection should then apply. Further, the plaintiff had failed to submit proof of reputation.

Thus, the BOIP concluded that the opposition should be dismissed and that EFE's logo should be registered as a trademark.

Barbara Braat

This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.