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Snapcar and the importance of trademark searching

11-07-2016

For companies that are active in several EU countries, an European Union Trademark (EUTM) registration is often recommended. An EUTM provides protection across the EU as a whole and enables its owner to act against others attempting to use a confusingly similar trademark for similar goods and/or services. However, if there are grounds to refuse an EU TM application in just one EU country – for example, a successful opposition by the  holder of an earlier (similar) trademark – the EUTM application will be refused in the EU in its entirety. A recent ruling by EUIPO’s Board of Appeal provides an example of such a refusal.

The ruling relates to the opposition brought by the holder of the French trademark Snapcar against the application for an EUTM to protect ‘SNAPPCAR’. In its 20 June judgement, EUIPO’s Board of Appeal ruled that, with regard to a number of designated services, the marks were similar, in that both signs are (also) used for the following services in class 35: “bringing together, for others, of a variety of goods, enabling customers to conveniently view and purchase those goods, including but not limited to vehicles”.

The Board of Appeal also confirmed the earlier judgment of EUIPO’s Opposition Division, which found that the signs were visually, phonetically and conceptually similar. First, the Board of Appeal held that, according to standard case law, the fact that SNAPPCAR is written in capital letters and Snapcar is written in lowercase, is irrelevant. Visually, the marks were ruled to be highly similar; the only difference is the extra letter ‘p’ in the latter mark. Phonetically speaking, the characters are pronounced exactly the same and were therefore considered to be identical. Finally, the court Board found that, as both characters have no meaning for the relevant (French) consumer, the conceptual comparison is neutral.

The (partial) similarity between the services concerned and the high similarity between the signs, led to the conclusion that there was a likelihood of confusion for the relevant public. Therefore, SNAPPCAR was refused as an EUTM for the aforementioned services in Class 35.

How can you avoid registering a potentially conflicting mark?
Trademark searching provides a quick and simple means to investigate the availability of your chosen brand and trade names in your industry and countries of business. Given the implications for Europe-wide protection if an EUTM is refused in just one jurisdiction, trademark availability searching should play a crucial role in any trademark registration strategy.

In this internet age where ‘free’ information is at everyone's fingertips 24/7, it may be tempting to use an online search engine, such as Google, to conclude whether a trademark already ‘exists’. However, such an online search will not identify those marks that have already been registered, but not yet launched into a marketplace – or at least not yet in such a way that it comes up highly ranked in an online search. Only a detailed trademark search in official or purpose-built databases will be able to identify such potential conflicts. (Find out more about trademark searching.)

For more on trademark searching or specific advice on your chosen EUTM, please speak to your Novagraaf consultant or contact us.

Frouke Hekker works in Novagraaf’s Competence Centre. She is based in Amsterdam