An interesting decision of the Board of Appeals of the EUIPO of December 15, 2021 (Volkswagen Aktiengesellschaft / Pinball Factory GmbH). It denies registration of a figurative EU Trademark that includes a representation of a van that is similar to the VOLKSWAGEN three-dimensional registered mark.
EUROPEAN FLIPPER / PINBALL FACTORY GmbH applied for EU Trademark registration of the following logo:
The application covered different products and services. They were the following: Class 11: Camping stoves. Class 12: motorhomes; mobile homes [caravans]; motorhomes; camping vehicles. Class 20: Furniture for camping; folding beds; camping tables; camping mattresses; Metal furniture and furniture for camping. Class 21: Grills for camping. Class 39: Rental of recreational vehicles.
VOLKSWAGEN Aktiengesellschaft opposed EUROPEAN FLIPPER’s application, alleging a likelihood of confusion with its trademarks:
Three-dimensional EU Trademark 10511591, for goods and services in Classes 12, 16, 35, 37, 39 and 41:
And its EU Trademark Extension of its Three-dimensional international trademark No. 922784, for goods and services in Classes 12, 14, 16, 18, 20, 21, 25, 28, 30, 35 and 37
VOLKSWAGEN claimed that its trademarks enjoy a high degree of recognition among the public relevant in relation to vehicles of Class 12, at least.
The EUIPO Opposition Division dismissed the opposition. It considered that:
- Although the products and services applied for were identical or similar to those covered by the earlier VOLKSWAGEN trademarks, the signs had only a low degree of visual similarity and a medium degree of conceptual similarity.
- Similarities between both signs were not enough for there being a likelihood of confusion.
- For non-English speaking consumers, the ‘Cultcamper’ element in the FLIPPER / PINBALL Brand would differentiate it from the VOLKSWAGEN brands.
VOLKSWAGEN appealed the decision before the Board of Appeals of the EUIPO.
DECISION OF THE EUIPO BOARD OF APPEAL
VOLKSWAGEN argued that the conflicting signs were misleading:
- The ‘Cultcamper’ element in the FLIPPER / PINBALL Trademark expressly referred to its ‘Bulli’ motorhomes. It is descriptive and is linked to its vehicles, therefore it is not distinctive or differentiating.
- Figurative elements were dominant in signs.
- The FLIPPER / PINBALL brand had copied / was identical to the front view of the VOLKSWAGEN brand.
- FLIPPER / PINBALL chose the location of the VW logo in the van, to place the peace sign, with a simple substitution of one circular logo for another.
The Board of Appeal has agreed. A three-dimensional mark does not have a distinctive character, if it does not deviate significantly from the customary forms in the sector. It points out that the Opposition Division had not said that this was the case here. Therefore, the three-dimensional mark of VOLKSWAGEN did have a distinctive character.
To the contrary, the Board of Appeals found that the VOLKSWAGEN markings are distinctive, because the front of the truck is characterized by a split windshield and the curved V-shape of the hood with circular headlights on each side.
The Board of Appeal maintains that the FLIPPER / PINBALL sign reproduces the front view of the VOLKSWAGEN brand, almost identically. It is only differentiated by the small peace symbol, which is barely noticeable, and the color of the contested sign.
The Board of Appeal takes into account the principle that the consumer does not recall the trademarks in their details, but in their general presentation, to find that the marks were visually similar.
The Board of Appeal concludes that there is a likelihood of confusion. Given the image of the FLIPPER / PINBALL mark applied for, the relevant English-speaking public in the EU will perceive that sign as another version of the earlier VOLKSWAGEN marks, rather than as a trademark with a different commercial origin.
Consequently, both signs cannot coexist on the market and the FLIPPER / PINBALL three-dimensional trademark cannot be registered, due to the possible risk of confusion with the VOLKSWAGEN trademarks.
Written by Santiago Nadal, Director of SN ABOGADOS in Barcelona