An application for the B'lue logo, (shown above left), was
rejected by the Opposition Division and the Board of Appeal, which
found it confusingly similar to the earlier word registration for
BLU DE SAN MIGUEL. The decision was appealed to the General Court
for consideration on whether the two marks were confusingly
similar, given the descriptive nature of the word BLUE.
The applicant, Danone, argued that the word BLU in the earlier
registration had weak distinctive character and would be seen by
the average consumer as descriptive of the colour blue. The General
Court found that the word BLU in the earlier mark was evocative of
a number of feelings and emotions (not dissimilar to Danone's
after this decision was handed down) which went beyond mere
The Court found that for most European consumers, SAN MIGUEL in
the earlier registration would not be the dominant element of the
mark as it consists of the second and last part, which is usually
seen as less prominent or of equal prominence. For some European
consumers who understand the meaning 'de' as a preposition
preceding an origin, SAN MIGUEL will be seen as merely denoting an
origin, and therefore BLU will be seen as the dominant and
distinguishing feature of the mark. The Court went further and
found that even European consumers not familiar with the meaning of
'de' would see SAN MIGUEL as an assumed descriptive Spanish
word indicating the name of the commercial undertaking or location
The Court made the oft-repeated point that considerations
regarding the granting of unfair monopolies over descriptive words
are not relevant in opposition proceedings but rather are dealt
with at the application stage, or in invalidity proceedings
post-registration, on 'absolute grounds'. It is only
necessary to consider whether the similarities between the marks
could result in a likelihood of confusion, i.e. 'relative
grounds'. This can be a problem when the registration in
question contains enough distinctive elements to render it
registrable, despite the existence of a descriptive word.
It was remarked that the 'water drop' elements contained
in the B'LUE logo did not detract significantly from the
element B'LUE; the addition of E in B'LUE did not alter the
meaning of the word and would only be slightly perceptible; the
interruption of the word BLUE with an apostrophe did not alter the
meaning and was only a slightly fanciful way of spelling the word
BLUE. The word BLU and B'LUE would be pronounced the same way
and are phonetically identical. The Court decided that overall
there was a high degree of both phonetical and conceptual
similarity between the marks
Having taken into consideration the fact that sports drinks
might be ordered verbally in a 'sports bar' or gymnasium,
the Court ''could not rule'' out a likelihood of
confusion. The opposition succeeded and the B'LUE logo was
prevented from achieving registration. Case T-803/14
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Trading under your name is an appealing idea, especially in the fashion world where designers frequently use their own names as brands (think Hugo Boss, Donatella Versace, and Tom Ford, to name but a few).
1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
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