EUROPEAN UNION: Visuals and Concept Win General Court’s Support in FINSBURY v. KINGSBURY

The General Court (GC) has annulled the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) in the trademark dispute between Borco-Marken-Import Matthiesen GmbH & Co. KG (Borco) and Belles Marks LTD (Belles Marks) regarding the EU Trade Mark application for KINGSBURY (Case T-603/23).

The dispute began in May 2021 when Belles Marks applied to register KINGSBURY as a word mark in Class 33, covering alcoholic beverages. Borco, the owner of the earlier registered FINSBURY mark for gin, opposed this application, claiming that registration of the mark would likely cause confusion with the earlier trademark.

Borco argued that the two marks shared significant similarities, especially in their endings, with both featuring the distinctive SBURY suffix. Borco claimed this created a likelihood of confusion, particularly because both marks covered similar products.

EUIPO’s Opposition Division partially upheld Borco’s opposition, refusing the registration of KINGSBURY for alcoholic beverages other than beer. However, Belles Marks appealed the decision, and in July 2023, the First Board of Appeal ruled in favor of Belles Marks, concluding that the visual similarity between the two marks was low and the phonetic similarity was only average. The Board determined that there was no likelihood of confusion between the two marks.

Borco appealed this ruling to the GC, which found, on September 11, 2024, that the Board of Appeal had made an error in its assessment. The GC emphasized that KINGSBURY and FINSBURY share seven out of nine letters, creating at least an average level of visual similarity. The GC noted that while the initial letters (“K” for KINGSBURY and “F” for FINSBURY) differed, this difference did not outweigh the overall similarities, particularly in the last syllables.

The GC also found that the phonetic similarity between the two marks was significant, as both contained three syllables with similar sounds in the second and third syllables. Although the conceptual comparison was neutral, especially for Spanish consumers, the GC concluded that the similarities in appearance and sound could lead to confusion among the relevant public.

Finally, the GC annulled the Board of Appeal’s decision and ordered EUIPO to cover Borco’s legal costs.

While consumers tend to pay more attention to the beginnings of words, the overall visual and conceptual similarities between marks can sometimes lead to confusion.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2024 International Trademark Association