Trade Mark Rejected Due to Earlier San Miguel Mark

A French company (the Applicant) has failed in its appeal against the rejection of its EU trade mark Application. The Application was rejected on the basis of an Earlier Mark, 'BLU DE SAN MIGUEL', registered in 2009 by the company behind San Miguel, the well-known beer brand.

The Applicant had applied to register a figurative mark made up of the word 'B'lue' along with decorative additions, in class 32 for isotonic beverages and high energy drinks. San Miguel's Earlier Mark is registered in class 32, for items of goods including beers and aerated waters and other non-alcoholic drinks. Isotonic beverages is deemed to fall within non-alcoholic drinks under the Earlier Mark's class 32 heading.

The two signs included the same concept, being the colour blue, and are also phonetically similar. The court considered this important despite the marks being visually similar only to a low degree. The court also considered it important to divide the earlier San Miguel mark into its sections in light of the new application. The court asked: how would the relevant public (all consumers in the EU with an average level of attention) distinguish San Miguel's Earlier Mark from other products bearing the name San Miguel? The answer to that question, being that the relevant public would likely use 'BLU' to distinguish the earlier mark, placed increased significance on the use of 'B'lue' in the new application. Therefore on balance the court considered that there was a likelihood of confusion.

Full details can be found in the General Court (Eighth Chamber) here. If you have any queries regarding United Kingdom or European Trade Marks and associated issues please do not hesitate to contact the team at McDaniel & Co. at legal@mcdanielslaw.com or 0191 281 4000.