Ultimately, the European Union Intellectual Property Office did not agree with GRUPO EIG MULTIMEDIA SL and dismissed the opposition. The main argument was the lack of conflict between the disputed trademarks.
The opposing company did not give up and appealed the decision to the Court of Justice of the European Union. The appeal referred to the level of attention of potential consumers of the disputed trademark. According to the appellant, in the case of the general public, this level is low, which in turn may lead to a greater risk of misleading consumers about the origin of goods and services marked in this way. Another argument was a renewed reference to the historical value and the magazine “Cambio16” published in the 1970s. According to the appellant, the name itself is known not only in Spain but also beyond its borders, which demonstrates its reputation and recognizability.
In examining the case, the court stated that it is difficult to argue that the number “16” in itself has a distinctive character that could mislead potential consumers. Furthermore, the distinctive capacity must be assessed holistically in relation to the goods and services bearing the disputed trademark. Therefore, after analyzing the disputed trademark in relation to the marks presented by the appellant, the EU Court concluded that there is no risk of misleading consumers. First and foremost, the number “16” cannot be identified as the main and dominant element of the mark, especially since the beginnings of both marks are textual and differ significantly. There is also no similarity on phonetic or visual levels.
Furthermore, according to the court, the degree of attention of potential consumers in the context of the “FORO16” mark, particularly in the context of print media or online broadcasts, should be considered normal, not low as the appellant argued. Consequently, the EU Court believes that there is no risk that consumers will be misled as to the origin of the goods and services bearing this mark. Regarding the historical value, the court pointed out that it would indeed be possible to rely on the reputation of the magazine at the turn of the years, but the recognition of a given brand should be assessed on the date of the application for a new trademark, and not based on its historical prestige.
As a result, the Court of the European Union, in its judgment of November 16, 2022 (case no. T-796/21), dismissed the appeal.
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