Victory Leaves A Sweet Taste in the Mouth for Haribo
Written by Leanne Davies on 03 October 2018« Return to Reading Room
The company Trade Group Europe has had its Trademark application stopped in its tracks by sweet giant Haribo, who were concerned that the figurative trademark sought after would cause confusion with the already registered Danish trademark belonging to Haribo. He decision was made on September 27th 2018 by the European Union Intellectual Property Office's (EUIPO) Fourth Board of Appeal.
Trade Group Europe applied to register the mark ‘Magic Circus’, with the first word in the colour black and the second in the colour red, in classes 21, 28, and 30 at the EUIPO.
Haribo then went on to file an opposition against the goods in class 30 in particular, which included candy and several other confectionary items. The company used its earlier-registered Danish trademark for ‘Circus’ (VR 2016 00529), registered in February 2016 in class 30 for confectionery to explain how confusion could come about.
Moving forward to 2017, the Opposition Division then upheld Haribo’s opposition. Explaining that “the word ‘Magic’ would be perceived as an adjective which qualified the word ‘Circus’ and noted that ‘Circus’ was the dominant element of the applied-for mark due to its large size and red colouring.”
The Opposition Division decided that the goods covered by the marks are in fact identical and a likelihood of confusion exists. Trade Mark Europe then filed a notice of appeal, arguing that that consumers focus on the beginning of a trademark, so they would be likely notice that the marks are completely different. It was also considered that the trademarks are different in length and colour, making them easy to differentiate.
Ownership and control of the ‘Magic Circus’ trademark application was reassigned to a Danish Company, C & T Holdings in August 2018.
Last week, the Fourth Board of Appeal said that the Opposition Division had correctly upheld Haribo’s opposition in relation to the goods in class 30.
The board said that the Danish public will understand the English word ‘Circus’, which is similar to the Danish term ‘Cirkus’. It also explained the adjective ‘Magic’ is obviously recognizable when compared to the Danish word ‘Magisk’.
“‘Magic’ will be understood as an adjective which plays a “minor role” compared to that of ‘Circus’, the board said. This is particularly true because of the “eye-catching red colour” of the word ‘Circus’ in the mark.”
The mark that had been previously registered was absolutely incorporated in the mark which was now being applied for, simply changing the colouring and letter stylization is not satisfactory to outweigh the similarities between the marks, the board determined.
The appeal was dismissed and clarified the EUIPO’s determination that the ‘Magic Circus’ mark cannot be registered in class 30. The board ordered C & T Holdings to pay the costs incurred by Haribo in all proceedings
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