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
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
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
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
Taking into account all the factors it ruled that the Board had
been right to find there was a likelihood of confusion between the
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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.
The UK government has not yet invoked Article 50 of the Treaty on European Union (this is likely to happen by the end of March), and the UK's actual exit from the European Union is at least two years away.
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