May 11, 2016

Toys and Sports Articles Lacking in Similarity in Trade Mark Decision

On 14 April 2016, the European Court of Justice (ECJ) dismissed an appeal to set aside a decision of the EU General Court (EUGC) made in July 2015 in relation to the registration of trade marks using the word "ALEX".


KS Sports IPCo GmbH holds Community trade marks for the word mark 'ALEX' and a figurative mark incorporating the text Alex (as shown below) in relation to various goods including sporting articles.

Alex Toys LLC  had applied for registration of the word mark 'ALEX' in respect of various goods, including children's bath toys and children's educational and developmental activity toys.

Board of Appeal and EUGC Decisions

In rejecting the opposition to registration of the trade mark the EUGC held that there was no likelihood of confusion between the word mark 'ALEX' and the earlier mark due to the lack of similarity between toys and sporting goods.

The EUGC confirmed the Board of Appeal's decision that toys and sporting goods were not, in fact, similar to one another and therefore there would not be any likelihood of confusion, thus an action for trade mark infringement could not be pursued by the German retailer, pursuant to Article 8(1)(b) of what is now called the EU Trade Mark Regulation (207/2009/EC).

When the EUGC made its decision, it was its opinion that the toys in particular were smaller in size and lower in weight. They also mentioned the fact that the two types of products in question served two  entirely different purposes with sports articles being intended to be used for physical fitness activities whilst the toys were principally intended to entertain and in the context of the present case, to educate children. It followed that the goods were also non-competing and that they were sold in different specialist shops or department stores.

ECJ Appeal Decision

The ECJ agreed with the earlier decisions.  Their reasoning was that toys and sporting goods were very different so there could be no likelihood of confusion.

In dismissing the appeal, the ECJ dismissed a number submissions made by the appellant. For example, one argument made was that the EUGC had contravened its obligation to provide reasons in relation to their review of the similarity of the goods in question. All of the submissions made by the appellant were rejected by the ECJ.

Furthermore, where an appeal is, wholly or partly unacceptable or groundless, the ECJ can decide by reasoned order to dismiss that appeal in whole or in part, pursuant to Article 181, ECJ Rules of Procedure. The ECJ exercised this power and dismissed the appeal in its entirety as it was inadmissible and unfounded.

The appeal decision in KS Sports v EUIPO (Order) [2016] EUECJ C-480/15 (14 April 2016) is available here.  

in: Case Law, News, Trade Marks

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