EU trade mark disputes: KINGSBURY v FINSBURY.

On 11 September, the General Court of the European Union ruled in case T-603/23 on a dispute between the EU trade mark KINGSBURY and the earlier word mark FINSBURY.

In 2021, the Cyprus-based company Belles Marks LTD applied to the European Union Intellectual Property Office (EUIPO) to register the sign KINGSBURY as an EU word mark for alcoholic beverages (except beer), preparations for making alcoholic beverages, alcoholic preparations for making beverages and cider, all in Class 33 of the Nice Classification. However, the German company Borco-Marken-Import Matthiesen GmbH & Co. KG opposed the registration on the basis of its earlier word mark FINSBURY, which covers goods in Class 33 and corresponds to the following description "gin".

In the first instance, the Opposition Division partially upheld the opposition and refused registration of the mark applied for in respect of the following goods "alcoholic beverages (except beers); cider". However, upon the applicant's appeal, the Board of Appeal concluded that, despite the identity of the goods, there was a low degree of visual similarity and a medium degree of phonetic similarity between the marks and therefore no likelihood of confusion.

The German company appealed the EUIPO decision to the General Court of the European Union, which had to decide whether there was a likelihood of confusion between the marks at issue. The Court pointed out that the EUIPO had wrongly assessed the visual and phonetic similarities and also the likelihood of confusion.

In relation to the visual comparison, the Court concluded that the marks 'KINGSBURY' and 'FINSBURY' had at least a medium degree of visual similarity. Although the EUIPO had argued that the similarity was low because of the differences in the initial parts of the marks, the Court highlighted that both had a significant number of letters in the same sequence, in particular in the final part "sbury". This visual similarity, together with the similar length of the marks, led the Court to consider that the average consumer might make a connection between the two marks, thereby increasing the likelihood of confusion. In this case, the relevant public was considered to be the average consumer of alcoholic products, who generally does not analyse the details of the marks but perceives them as a whole.

As regards the phonetic comparison, although the EUIPO had stated that the initial consonants 'f' and 'k' were clearly different, the Court noted that both marks had three syllables and that the last two syllables were identical. This similarity in pronunciation, together with the fact that the word 'king' could be perceived as a distinctive element, was not sufficient to rule out the likelihood of confusion.

Finally, the Court pointed out that, in cases such as this, where the goods covered by the conflicting marks are partly identical and partly similar, a high degree of difference between the marks is necessary in order to rule out any likelihood of confusion. For all those reasons, the General Court concluded that the visual and phonetic similarities, combined with the normal distinctiveness of the earlier mark 'FINSBURY', indicated that there was a likelihood of confusion between the two marks. Therefore it upheld the appeal brought by Borco-Marken-Import Matthiesen and ordered the EUIPO to pay the costs.