The General Court’s surprising decision concerning the term ‘Blue’

Authors: Mykolas Jakutis, an Assistant to Attorney-at-Law in METIDA, Reda Zaboliene, Managing Partner, Attorney-at-Law, Patent Attorney in METIDA

On 27th of June 2013 the European General Court adjudicated the case No T-367/12 concerning confusing similarity of the trademarks MOL BLUE CARD and BLUE, BLUE BBVA, TARJETA BLUE BBVA. The Opposition Division of the Office for Harmonization in the Internal Market (OHIM) rejected the opposition, considering that there was no likelihood of confusion between the marks at issue. Upon appeal, the Second Board of Appeal annulled the Opposition Division’s decision, considering that there was a likelihood of confusion. The applicant filed an appeal before the General Court arguing that there was no likelihood of confusion.

              Earlier marks                                                                        Contested marks

                  BLUE

              BLUE BBVA                                                                       MOL Blue Card

     TARJETA BLUE BBVA

The applicant, MOL Magyar Olaj- és Gázipari Nyrt, obtained an international registration for the word mark MOL BLUE CARD, designating the European Community. The trademark claimed protection for services in Classes 35 and 36 of the Nice Classification. The intervener, Banco Bilbao Vizcaya Argentaria, SA, filed a notice of opposition, to registration of the contested mark in respect of the services referred above. The Opposition Division rejected the opposition and the Second Board of Appeal annulled the said decision. As a preliminary point, the Board of Appeal observed that the relevant public was made up of both professionals working in the sector and the general public in the European Union. Concerning the marks at issue, the Board considered that the earlier marks and the contested mark were visually similar in so far as they contained an identical element, that is to say ‘blue’, that there was only a low degree of phonetic similarity and that, conceptually, they were similar to a certain extent. The Board concluded that the marks at issue should be considered to be similar given that the element ‘blue’ was reproduced in its entirety in the contested mark and that that similarity cannot be offset by adding the elements ‘MOL’ and ‘card’. As regards the element ‘blue’ contained in the marks at issue, the Board found that, in so far as no direct relation with the services in question has been established that element had average distinctive character. Consequently, the Board of Appeal found there to be a likelihood of confusion.

The applicant filed an appeal before the General Court arguing that there was no likelihood of confusion. The court considered that the dissimilarity between the marks at issue, due to the presence of the word elements ‘MOL’ and ‘card’ in the mark applied for, were not sufficient to counteract the aforementioned similarities. Concerning the argument that ‘MOL’ may be considered as being more distinctive than the other two elements of the contested mark, the court found that it could not be regarded as dominating the overall impression produced by the mark MOL BLUE CARD or the imperfect picture which the relevant consumer will keep in his/her mind. The court held that the Board of Appeal had rightly found that the element ‘blue’ – to the extent that it constitutes in itself one of the earlier marks – still had an independent distinctive role in the mark MOL BLUE CARD, without necessarily constituting the element dominating the overall impression created by the mark. The court concluded that the services in question were identical and that the marks at issue were visually similar in that they contain the word ‘blue’, phonetically similar to a very low degree and conceptually similar to a certain extent.

This decision is surprising as the additional term ‘MOL’ in the contested trademark is very distinctive. This decision is not yet final and probably will be appealed before the Court of justice of the European Union.

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