EU General Court delivers TM defeat to Deutsche Post

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The EU General Court has dismissed an appeal made against the European Union Intellectual Property Office (EUIPO) by German postal service company Deutsche Post.

Belgium-based bPost filed an application for an EU trademark in February 2010 at the EUIPO for the sign ‘Bepost’.

The applied-for trademark covers classes 16, 35, 38 and 39. Goods encompassed within these classes include paper, cardboard and goods made from these materials; advertising and business management; communications and telecommunications services; and transport and the packaging and storage of goods.

Deutsche Post, which delivers 61 million letters each day in Germany, filed a notice of opposition in July 2010, based on earlier trademarks.

The first, a German trademark for the word ‘Post’, was registered in November 2003 under trademark number 30,012,966 and renewed until February 2020. The trademark covers services falling under classes 35 and 39.

The second was for the EU word mark ‘Deutsche Post’, registered in July 2002 under the trademark number 1,798,701 and renewed until August 2020. This trademark covers classes 16, 35, 38 and 39.

Deutsche Post also referred to two EU figurative trademarks, one consisting of a red ‘e’ followed by the word ‘post’ in black on a yellow background. The trademark was registered in April 2008 under the number 5,850,193 and covers goods and services in classes 35, 38 and 39.

The second figurative trademark consists of a capitalised ‘E’, followed by a small horn and the word ‘Post’ on a yellow background. The trademark was registered in January 2010 under the number 8,408,056 and covers goods in classes 16, 35, 38 and 39.

The Opposition Division rejected an opposition from Deutsche Post in November 2014.

Deutsche Post filed a notice of appeal at the EUIPO in December 2014. Upon dismissing the appeal, the EUIPO said that, “although the signs at issue shared the word element ‘post’, they showed significant visual, aural and conceptual differences which were sufficient to rule out a likelihood of confusion”.

Since the word ‘post’ is a generic term used to refer to postal and related services, the Board of Appeal ruled the public would not establish an association or mental link between the companies.

Deutsche Post sought further action at the General Court.

In its decision, the General Court said that the Board of Appeal was correct when it found that the signs at issue were similar to a low degree, but had significant visual differences. It also agreed with the Board of Appeal that the pronunciation of the trademarks in question was different.

It also dismissed Deutsche Post’s argument that the applied-for trademark would cause confusion.

The General Court dismissed Deutsche Post’s appeal, and ordered it to pay costs.