General Court of the European Union states no likelihood of confusion between “BEPOST” and “(e)POST” trademarks
On 20 February 2018, the General Court of the European Union (GC) upheld the previous decision of Board of Apeal of EUIPO (BoA) when it found the trademark “BEPOST” and the trademarks “POST” and “ePOST” to be sufficiently visually and aurally different to rule out a likelihood of confusion.
EU trademark No. 5850193 German trademark No. 30012966
(word/device mark) (word mark)
EU trademark application No. 008897829
I. Background of the case:
On 19 February 2010, bpost NV, a Belgium company specialized in delivery services, applied for the trademark No. 008897829 “BEPOST” (word mark) as an EU trademark (EUTM) for products in Classes 16, 35, 38 and 39 (mainly transport and delivery services for postal items). The application was then published in the Community Trade Marks Bulletin, but on 5 July 2010, the German company, Deutsche Post AG, filed a notice of opposition on the grounds of prior rights. The opponent claimed infringement of Article 8 (1) b) Regulation No. 2007/2009 (now Article 8 (1) b) Regulation No. 2017/1001) with regard to its following earlier rights:
- German trademark No. 30012966 “POST” (word mark), registered on 3 November 2003
- EU trademark No. 5850193 “ePOST” (word/device mark), registered on 1 April 2008
- EU trademark No. 1798701 “Deutsche Post” (word mark), registered on 29 July 2002
- EU trademark No. 8408056 “EPOST” (word/device mark), registered on 21 January 2010
- non-registered mark or sign in the course of trade for “Deutsche Post AG” and “Post” for the transport and delivery services.
On 13 November 2014, the Opposition Division rejected the opposition of Deutsche Post AG. Later, on 18 January 2016, also the BoA came to the same conclusion and dismissed the appeal. The appellant then brought the case to the next instance, the GC. In the proceedings before the GC, the appellant subsequently decided not to raise an infringement of Article 8 (1) (b) of Regulation No. 207/2009 in respect of the earlier EU trademark No. 1798701 “Deutsche Post” (word mark) and the EU trademark No. 8408056 “EPOST” (word/device mark). The appeal was so only based on the first two rights: German trademark No. 30012966 “POST” (word mark) and EU trademark No. 5850193 “ePOST” (word/device mark).
II. Decision of the GC:
On 20 February 2018, the GC published its decision (T-118/16), but, to the disadvantage of the applicant. The Court agreed with the BoA´s findings and upheld the registration for the EU trademark application No. 008897829 “BEPOST” (word mark).
In comparison to the earlier German trademark No. 30012966 “POST” (word mark), the Court found that the signs are visually and aurally different, despite the common element “post”. Further, there are differences on the conceptual level, too. In the GC´s view, the element “be” at the beginning of the sign was considered to possess a particular importance as the relevant public normally pays more attention to the beginning of a trademark. Therefore, the “be” part was seen as dominant in comparison to the word element “post”, which is descriptive and just refers to the offered services. As a result, the Court concluded that there was no likelihood of confusion between the sought EU word mark “BEPOST” by bpost NV and the German word mark “POST”.
Next, regarding the earlier EU trademark No. 5850193 “ePOST” (word/device mark), the Court again took the same arguments into account that the signs show significant visual, aural and conceptual differences, despite the common element “post”. On a conceptual level, the difference was that the element “e” in the sign “ePOST” referred to fact that the services are offered via an electronic platform. Contrary to that, the element “be” in the sign “BEPOST” should establish a link to the company.
As regards German rights in the designation “POST”, the Court set out that the designations were different to such a level that likelihood of confusion within the meaning of Section 15 of the German Trademark Act could not be acknowledged.
Finally, the Court further dealt with the question of potential unfair advantage or detriment regarding the distinctiveness or repute of the allegedly reputed German word mark No. 30012966 “POST”. The Court did not examine the reputation in detail as it noted that the consumers would not mistake the marks “BEPOST” with “POST” and therefore, it was not a case of infringement of Article 8 (5) of Regulation No 207/2009.
In this decision, the GC repeats that even one letter can make all the difference when using a descriptive element, such as “POST”. The conclusion is in compliance with previous GC decision about another “POST”-variant mark (Case T-102/14). In that case, the Court also found no likelihood of confusion between the signs “TPG POST” and “(Deutsche) POST”.
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