September 27, 2021
In October 2015, Huawei Technologies Co Ltd applied to register the word sign GT10 as an EU trade mark in Classes 9 (including “Communications equipment” and “telecommunications apparatus”), 14 and 35 (including “Retail services in relation to communications equipment”).
Sony Interactive Entertainment Europe Ltd opposed the application under Article 8(1)(b) and Articles 8(4) and (5) of the Trade Mark Regulation (207/2009/EC), relying on its earlier EU figurative mark, in Classes 9, 16 and 28:
Sony also relied on its non-registered UK word mark “GT” used in the course of trade for various goods and services.
The Opposition Division rejected Sony’s opposition and the Board of Appeal dismissed its appeal. Sony appealed to the General Court, arguing amongst other things, that the BoA had failed to identify the relevant public and did not take into consideration how a significant portion of that public would perceive the earlier marks.
The GC said that identifying the relevant public was crucial to examining the likelihood of confusion under Article 8(1)(b). It found that the BoA had merely stated that the relevant public was composed of users likely to use both the goods and services covered by the earlier mark and those covered by Huawei’s application mark and not only of specific consumers of the goods and services bearing the earlier marks.
In the GC’s view, that statement could not be interpreted as identifying the relevant public. The BoA had merely recalled the principles governing the definition of the relevant public and had not applied them to the case.
In fact, the BoA had said that there was “no need to establish the level of attention of the public nor whether it contains average consumers or professionals for each of the goods and services concerned”. Therefore, the GC said, it was clear that the BoA had deliberately chosen not to identify the relevant public, on the ground that that information did not influence the decision.
Consequently, the BoA had erred in law. That error had vitiated the entirety of its assessment, since it had assessed the likelihood of confusion on a comparison of the signs in the abstract. An assessment of the likelihood of confusion must be based on the perception of the relevant public.
Therefore, the GC upheld Sony’s first ground of appeal and ordered that the BoA’s decision be annulled. (Case T-558/20 Sony Interactive Entertainment Europe Ltd v EUIPO EU:T:2021:381 (16 June 2021) — to read the judgment in full, click here.