In the case of Decathlon v EUIPO (Case T-349/19), French sporting goods retailer, Decathlon, lost its legal dispute against EUIPO in challenging the trademark registration of Athlon Custom Sportswear (“Athlon”), following the General Court’s judgement that there is “no likelihood of confusion” [95] between the earlier trade mark registered in 2004, and the trade mark applied for by Athlon.

BACKGROUND

On 14 December 2016, Athlon applied for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) in accordance with Regulation (EU) 2017/1001. Athlon sought registration for goods in “clothing; hats” (Class 25 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks) and “sporting articles and equipment” (Class 28), the latter of which the sportswear brand later withdrew the application for, on 5th November 2018.

In response to the publication of Athlon’s EU trade mark application in the European Trade Marks Bulletin, No 2017/011, on 18th January 2017, Decathlon filed a notice of opposition which was “based on the EU word mark DECATHLON… covering, inter alia, goods in Classes 25 and 28” which followed the description of “clothing; caps” (Class 25) and “Gymnastic and sporting articles” [6].

EUIPO’s Board of Appeal “annulled the decision of the Opposition Division”, that had upheld the opposition to register the mark applied for in respect to all the goods described, and “rejected the opposition in its entirety, holding that there was no likelihood of confusion between the marks at issue” [11]. In light of the decision, Decathlon as the applicant sought to “uphold the decision of the Opposition Division of 6 July 2018” and “refuse the registration of the mark applied for” [13].

JUDGMENT

The applicant, Decathlon, relied solely on the alleged infringement of Article 8(1)(b) of Regulation 2017/1001 to substantiate their grounds of refusal. This states the trade mark applied for shall not be registered if “the earlier trade mark and the identity or similarity of the goods and services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected”. In the court’s assessment of a likelihood of confusion, a number of factors were considered, most significant and conclusive being the visual and conceptual comparison, along with the extent to which the earlier mark was of distinctive character to the “relevant public”, both parties focused their arguments on the “English-speaking public” of the European Union [22].

Decathlon argued a likelihood of confusion, stating the signs are “confusingly similar since they are both dominated by the distinctive and attractive word ‘athlon’” [83], however in circumstances where a sign consists of both figurative and word elements, such as Athlon’s, “it does not automatically follow that it is the word element which must always be considered to be dominant” (Monster Energy v OHIM T-61/14) [37]. The court demonstrated a number of reasons as to why the word ‘athlon’ was not, in fact, dominant.

Despite Decathlon’s efforts to demonstrate otherwise and that the “earlier mark enjoys an enhanced scope” [82], the court found the earlier mark applied for to be of weak distinctive character in relation to the word element ‘athlon’, “which was common to the signs at issue… and would not therefore be perceived as an indication of commercial origin” [91].

The court found the “Board of Appeal was right in considering that… the word ‘decathlon’ would be associated with a competition in which athletes compete in various different sporting events”, not exclusively the sports retailer Decathlon regardless of its “intensive use in Europe for several years” [83], “the element ‘athlon’ was a commonly used suffix” particularly in English, and “that the words ‘decathlon’ and ‘athlon’ were inherently descriptive… for the athletic goods at issue” [56].

The court referred to case law concluding “where some elements of a trade mark are descriptive of goods in respect of which that mark is registered or the goods covered by the application for registration, those elements are recognized as having only a weak, or even very weak, distinctive character” (Koipe v OHIM T-363/04, para 92) [55].

The court attached more weight to the visual impression of the mark applied for and assessed “from a visual standpoint, the differentiating elements noted are more important than the element of similarity, ‘athlon’ [45]. This is due to the “perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion” [28].

The “three additional letter ‘d’, ‘e’ and ‘c’ at the beginning of the earlier mark”, “the stylisation of the word ‘athlon’”, “the words custom sportswear” [42] and notably the figurative element on the mark applied for aided the court “in finding a very low degree of visual similarity between the marks at issue” [46].

The figurative element of Athlon’s trade mark applied for was ruled to have “a significant impact on the overall visual impression” [44], giving it a distinctive character that would “dominate in the overall impression on the relevant public” [92], as opposed to the use of the word ‘athlon’ trade mark applied for.

In favour of EUIPO, the Court dismissed Decathlon’s action in its entirety, ruling that the applicant’s only plea under Article 8(1)(b) of Regulation 2017/1001 for alleged likelihood of confusion was unfounded.