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It is becoming increasingly popular for brands to omit letters, commonly, but not always, vowels, from trade marks with the likes of Nike registering 'snkrs' and Burberry registering 'BRBY'. However, the case below highlights that, despite this market trend, earlier right holders of full-length words may not necessarily be able to oppose applications for shortened versions of their marks and it is likely earlier rights holders will need to provide sufficient evidence of consumer awareness.
The General Court has issued a decision rejecting an appeal against the First Board of Appeal's (the "BoA") decision to reject an opposition to EU designation of IR No. 1566912 for the mark BTFY.
In April 2021, Tamasu Butterfly Europa GmbH (the "Opponent") filed an opposition to the EU designation of IR No. 1566912 for the mark BTFY (the "Application Mark") in the name of Domu Brands Ltd (the "Applicant") on the basis of its EU Trade Mark Registration No. 17932135 BUTTERFLY (the "Earlier Mark") and its German trade names Butterfly and BTY. The opposition was directed at goods and services in Classes 18, 21, 24, 25, 28 and 35 and the Opponent relied on a likelihood of confusion under Article 8(1)(b) EUTMR, reputation under Article 8(5) EUTMR and its unregistered rights under Article 8(4) EUTMR.
Grounds of opposition
The BoA found the respective marks BUTTERFLY and BTFY to be visually, phonetically and conceptually dissimilar.
On appeal to the GC, the Opponent argued that the BoA had overlooked the fact that the term 'BTFY' was an abbreviation of the term 'BUTTERFLY', where the average consumer would automatically add the missing letters and perceive the mark as an abbreviation of 'BUTTERFLY'. It relied on this argument for the visual, phonetic and conceptual assessments of the Application Mark and the Earlier Mark. However, it was only relevant in relation to the conceptual analysis.
Visually, the GC held that identity in the first and last letters of the respective marks was not sufficient for a finding of visual similarity, given that when the marks were assessed as a whole, they were substantially dissimilar.
Phonetically, the GC referred to case law setting out that a large proportion of abbreviations or acronyms are pronounced letter by letter. The GC agreed with the BoA that the Application Mark would be pronounced letter by letter, in four syllables, and that the pronunciation of the respective marks would be dissimilar.
The conceptual assessment was based on the perception of the English-speaking part of the relevant public, which understood the meaning of the term 'BUTTERFLY' to mean an insect with large colourful wings and a thin body. The Opponent made reference to the trend of omitting vowels from dictionary words and that the relevant public was aware that these marks were abbreviated forms of dictionary words. However, the GC held that, in essence, the Application Mark was not the result of the omission of the vowels of the word 'BUTTERFLY' because it would expect the remaining term to be 'BTTRFL' or 'BTTRFLY' and not 'BTFY'. Interestingly, the GC held that even if the term 'BTFY' was the result of the omission of the vowels of the word 'BUTTERFLY', it would not be sufficient to establish that the relevant public with an average level of attention perceived the term 'BTFY' as being an abbreviation of the word 'BUTTERFLY'. The Applicant submitted evidence to demonstrate the term 'BTFY' was perceived as the word 'BUTTERFLY', but the GC held that it did not demonstrate that a sufficient part of the relevant public used the abbreviation. The term 'BTFY' was considered meaningless rendering the respective marks conceptually dissimilar.
As the respective marks were considered dissimilar, the GC confirmed that the BoA was correct to find that one of the conditions necessary for Articles 8(1)(b) and 8(5) EUTMR was not fulfilled and rejected the opposition on these grounds.
This was also the case in relation to Article 8(4) EUTMR because the Opponent relied on German law which required a finding of similarity between the trade name Butterfly and the Application Mark. The Opponent failed to show that use of the trade name BTY in the course of trade was of more than mere local significance and this ground of opposition was also rejected.
Conclusion
The GC dismissed the appeal in its entirety and ordered the Opponent to bear its own costs and those incurred by the Applicant.
Comments
This case highlights that earlier rights holders cannot always broaden the scope of enforceability of their earlier word marks to later marks which have omitted letters, commonly vowels, but retain, in order, other letters. Enforcement against marks which have omitted letters is likely to require evidence of consumer awareness and that they are abbreviations used by a sufficient part of the relevant public.
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