Beach Club Swims Into An Ocean Of Trouble

Ice Mountain Ibiza, the owners of Ocean Beach Club in Ibiza, have failed in their appeal to the General Court of the European Union to register a figurative trade mark (which can be found here, though note the judgment is in French) for the club in Class 41. Class 41 is for services relating to party rooms, nightclubs and entertainment services. The application was opposed by Atlantic Ocean Club in Marbella, Spain on the basis of its similarity with their earlier mark which can also be found in the judgment for which the link is provided above.

The appeal was dismissed on the basis that the differences between the signs was not sufficient to exclude the existence of a likelihood of confusion. The Court held that there was a certain degree of visual similarity between the signs. It was noted that the word 'ocean' was featured prominently in both signs and the use of the capital letters 'O' and 'C' reinforced the visual similarity of the marks. The word 'Ibiza' was also present on both signs.

The Court said that the word 'Ocean' would be perceived by the Spanish public as having a distinctive character for the services in Class 41. This was because there was no direct link between the sea and the characteristics of the services that are offered in Class 41. This provided the term with a distinctive character and ensured the validity of the mark belonging to Atlantic Ocean Club.

Given the fact that the marks were to be for services in the same class and taking into account the similarities of the signs, the General Court decided that there was a risk of confusion under Article 8(1)(b) of the European Union Trade Mark Regulation.  On this basis, the decisions of the Opposition Division and Board of Appeal of the European Union Intellectual Property Office were upheld and the appeal dismissed.

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