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For Tune sp. z o.o., filed an EU trade mark application for the trade mark above left. The application was for services in classes 35 and 41, namely:
Class 35: ‘Advertising; business management; business administration; office functions’ and all the services of the alphabetical list in this class of the 10th edition of the Nice Classification (2013);
Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities’ and all the services of the alphabetical list in this class of the 10th edition of the Nice Classification (2013).
Gastwerk filed a notice of opposition based on its earlier German word mark for FORTUNE-HOTELS (above right) registered for ‘Advertising; business management; business administration; office work; market research; hosting of exhibitions’ in class 35 and ‘Entertainment; conducting of tutorials; meetings and continuing education courses’ in class 41. The ground of opposition was a likelihood of confusion between the two marks.
In December 2013, the Opposition Division upheld the opposition in part.
The applicant appealed against this decision. The Fifth Board of Appeal of EUIPO dismissed the appeal. They drew a distinction in terms of the relevant public, taking the view that the services in Class 35 were, in essence, directed at a professional public, whereas the services in Class 41 were directed at both the general and the professional public, concluding that the level of attention of the relevant public was at least average. Similarly, when comparing the services, the Board of Appeal endorsed the Opposition Division’s assessment in its entirety. It found that from a visual and phonetic viewpoint, the signs had an average degree of similarity and that a certain degree of conceptual similarity could not be excluded. Consequently, the Board of Appeal concluded that there was a likelihood of confusion.
The applicant appealed against this decision to the General Court. The Court agreed that the relevant public was in Germany and that the services were in part identical and in part similar. It ruled that the applicant was wrong to infer that the Board had only taken into consideration the average consumer with an average level of attention with regard to all the services. The Court approved of the fact that the Board of Appeal had reasoned the level of attention of the average consumer of the services was, in any event, ‘at least’ average, and that it could not be ruled out, as regards in particular the services intended for professionals only, that the level of attention of consumers might be above average.
In its appeal to the General Court the applicant had argued that the signs were visually distinguishable as they were spelt differently and were also different in their design. It claimed the accent in the application was placed on the element ‘for’, which was stylised and coloured red. Furthermore, consumers would notice the difference in the length of the signs “FORTUNE” (one word) vs “for tune” (two words).
The judges agreed with the Board that the marks had average visual similarity, which was reinforced by the fact that the word element of the proposed mark was included in the earlier German mark. It found that the word “fortune” would be noticed in the overall impression created by the proposed mark, rather than the two word elements “for” and “tune“’, as the applicant had argued. This was reinforced by the fact that the French and English word “fortune” (meaning chance) had entered the German language. The word “fortune” was the dominant element in both marks.
The Court also agreed with the Board that there was an average degree of phonetic similarity between the marks (taking into account the absence of the word “hotels” in the proposed mark) and that a certain degree of conceptual similarity could not be excluded.
Taking into account all the factors it ruled that the Board had been right to find there was a likelihood of confusion between the marks.