The EU General Court has upheld a decision of the EUIPO Board of Appeal, which found a likelihood
of confusion between a "Morgan & Morgan" figurative
trade mark registered in class 36 for, primarily, banking services,
(the "Registration") – above right – and a
figurative sign incorporating the text "Morgan &
Morgan" – above left – for which registration as
an EU trade mark (EUTM) was sought for
banking, insurance and real-estate services in classes 35, 36 and
45 respectively (the "Application").
The owner of the Registration opposed the Application under
Article 8(1)(b) of the Community Trade Mark Regulation No 207/2009,
on the basis that there was a likelihood of confusion between it
and the pre-existing Registration. At first instance the Opposition
Division rejected the opposition on the grounds that it considered
that the shared word element 'morgan & morgan' was not
the dominant element in either the Application or the Registration
and that, therefore, given the visual and phonetic differences
between the signs and the higher-than-average level of attention of
the relevant public (customers of banking and insurance services),
there was no likelihood of confusion.
The Board of Appeal annulled the decision of the Opposition
Division and rejected the EU Application in respect of all the
services for which registration had been sought. The Board found
that there was a likelihood of confusion, in particular a
likelihood of association, between the Application and the
Registration. In a financial services context, the word element
common to both the Application and the Registration, 'morgan
& morgan', conveyed important information about the
respective marks which would, in each case, be identified by
consumers over the figurative elements of the marks. Taking into
account the distinctive character of the 'morgan &
morgan' element, the Board of Appeal took the view that, given
the nature of the services covered in the application, and the,
albeit limited degree of similarity between the Application and the
Regulation, the Opponent had established a likelihood of
The General Court found that the Board of Appeal was correct to
hold that there was some visual and phonetic similarity (albeit not
to a high degree) between the Registration and the Application. The
Court accepted that the words "morgan & morgan" held
a secondary role in the Registration in contrast to the much larger
figurative element but agreed with the Board of Appeal that the
larger figurative element did not obscure the conceptual similarity
between the Registration and the Application.
Given the fact that there was some visual, phonetic and
conceptual similarity between the Application and the earlier
Registration, the Court found that the Board was correct in its
finding that there had been right to find that there was a
likelihood of confusion between the mark applied for and the
earlier mark, given the identity of the services and the degree of
similarity between the Application and the Registration.
On the face of it this decision could be viewed as surprising,
given the fairly low degree of similarity between the Application
and the Registration. However, given the high degree of similarity
when considering the services in question and the high value placed
on trading names in financial services, the case is a useful
reminder that context is crucial in determining likelihood of
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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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