Trade marks – Community trade marks – confusion – phonetic similarities

    [Council Regulation 40/94 on the Community trade mark Art.8(1)(b).]S applied to register the words BLACK BULL as a Community trade mark for goods in Classes 25, 32 and 33 (clothing, headgear and footwear, non alcoholic and alcoholic drinks) and Class 42 (various hospitality services). RB opposed the application on the basis of its prior national registrations of the trademark RED BULL. R argued that the mark BLACK BULL was similar to its marks, and related to the same goods, in terms of Council Regulation 40/94 on the Community trade mark Art.8(1)(b).
    Held, allowing the opposition in part, but allowing registration for use in Classes 33 and 42, that the two marks shared close phonetic similarities and the word BULL was not usually found in relation to Classes 25 and 32. The dominant nature of the word meant that the marks were similar. Of the national registrations relied on by RB, only Irish marks for goods in Classes 25 and 32 were relevant and these showed that the public would be likely to believe the goods had a shared source, giving rise to the risk of confusion.
    SCOTTISH & NEWCASTLE PLC’S TRADE MARK APPLICATION [2000] E.T.M.R. 1143, Tomas de las Heras, Office for Harmonization in the Internal Market (Opposition Division).

“Current Law” February 2001