2024 WIPO IP Judges Forum Informal Case Summary – General Court of the European Union [2024]: Google LLC v EUIPO and EPay AD, Case No. T‑78/23
This is an informal case summary prepared for the purposes of facilitating exchange during the 2024 WIPO IP Judges Forum.
Session 4
General Court of the European Union [2024]: Google LLC v EUIPO and EPay AD, Case No. T‑78/23
Date of judgment: June 12, 2024
Issuing authority: General Court of the European Union
Level of the issuing authority: Final Instance
Type of procedure: Judicial (Administrative)
Subject matter: Trademarks
Plaintiff: Google LLC
Defendant: European Union Intellectual Property Office (EUIPO)
Keywords: EU Trademark, Opposition proceedings, Earlier trademark, Relative ground for refusal, Likelihood of confusion, Low distinctiveness of trademark
Basic facts: On October 17, 2019, Google LLC (the plaintiff) filed an application with EUIPO to register the word sign “GPAY” for goods and services in Classes 9 and 36 of the Nice Classification.
On February 4, 2020, EPay AD (the intervener) filed a notice of opposition to the registration of the mark applied for in respect of the aforementioned goods and services. The opposition was based on the below figurative mark, registered in Bulgaria for goods and services in Classes 9 and 36 of the Nice Classification:
Following the plaintiff’s request, EUIPO invited the intervener to provide proof of genuine use of the earlier mark. The intervener complied with that request within the prescribed period.
On September 30, 2021, the Opposition Division determined that genuine use of the earlier mark had been proven only in connection with electronic payment services. As these services correspond to “financial affairs” and “monetary affairs” included in the earlier mark’s list of services in Class 36, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001.
On October 13, 2021, the plaintiff filed a notice of appeal with EUIPO against the decision of the Opposition Division.
The Board of Appeal dismissed the appeal on the ground that the Opposition Division had not erred in finding that there was a likelihood of confusion between the mark applied for and the earlier mark in respect of the goods and services covered by the mark applied for.
The plaintiff, Google LLC, sought to annul the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office. The plaintiff argued that the entire relevant Bulgarian public understands the semantic content of the basic English word “pay”, which is present in the marks at issue. As a result, the plaintiff contended that this common element is non-distinctive and does not affect the assessment of the similarity between the marks. Furthermore, the plaintiff asserted that, given the non-distinctive character of “pay” and the presence of the letter “g”, which is inherently distinctive and positioned at the beginning of the applied for mark, there is no likelihood of confusion.
Held: The General Court dismissed the action, confirming the likelihood of confusion, and ordered Google LLC to pay the costs.
Relevant holdings in relation to the strength of trademarks: The Court was bound to examine two elements of the trademarks in question that were viewed as possibly weak.
First, the Court needed to look at the common English word “pay”. The Board of Appeal held that if the public understands a common English word, it becomes a very weak element of the trademark in question. However, if the word is not understood by the public, it is considered to be distinctive.
The Court first recalled that, according to case law, knowledge of a foreign language cannot generally be assumed. In territories where the relevant language is not the native language of the population, such knowledge must be proven unless it is a well-known fact that the target public in those territories possesses sufficient knowledge of the language of the sign. The plaintiff did not prove that the relevant Bulgarian public, as a whole, would understand the meaning of the word “pay”.
Second, the distinctiveness of individual letters was analyzed. The Board of Appeal held that the letter “e” can be understood as an abbreviation of “electronic” and is therefore considered very weak; the letter “g”, having no particular meaning, should be perceived as possessing average distinctiveness. In assessing the arguments regarding the distinctiveness of the letter “g”, the Court noted that, since the contested mark is a word mark, it is necessarily written in a standard font. Therefore, the Court did not agree with the plaintiff’s argument that the letter “g” is the dominant and visually striking element of the contested mark.
Since the plaintiff did not succeed in challenging the Board of Appeal’s assessment of the inherent distinctiveness of the earlier mark for a non-negligible portion of the relevant Bulgarian public, the Court upheld the Board of Appeal’s finding. The Court agreed that the likelihood of confusion among a segment of the relevant Bulgarian public was sufficient to uphold the opposition.
Relevant legislation: