Menu

Likelihood of confusion between Victor and Victoria

Print publication

10/11/2016

The EU General Court has upheld a decision of the EU Intellectual Property Office Board of Appeal that there existed a likelihood of confusion between the word mark VICTOR, sought for registration as an EU trade mark in relation to sports clothing and retail services and a figurative mark incorporating the word “victoria” registered in Spain in relation to clothing. [1]

The General Court agreed with the Board of Appeal that there were visual, phonetic and conceptual similarities between the two signs and that the goods and services covered were partially identical and partially similar.

The Court rejected a submission that the proprietor of the “victoria” mark had not established use as the mark was not directly affixed or linked to the footwear. The Court said it was customary in the footwear sector for a trade mark to be affixed to the sole or inside of a shoe with the consequence that it was natural that the mark would not show on certain photos of the shoes. Further, according to settled case law, a connection between the mark and goods can be established without it being necessary for the mark to be affixed to the goods – the invoices, catalogues and advertisements used by the proprietor of the “victoria” mark enabled the necessary link between the mark and the goods to be established in this case.

________________________

[1] Case T-204/14, Victor International v EUIPO (VICTOR)

Contacts