General Court annuls EUIPO decision in Fly Persia trademark dispute

Background to the dispute

The General Court of the European Union recently rendered a judgment in a trademark dispute involving Fly Persia IKE and Mr Ali Barmodeh against the European Union Intellectual Property Office (EUIPO). The case revolved around the registration of a figurative EU trademark applied for by the applicants on 13 February 2019, which covered various services in Class 39 of the Nice Agreement, primarily related to air transport and airline services.

Dubai Aviation Corp., based in Dubai, opposed the registration on 4 June 2019, citing an earlier EU trademark registered in 2009. The opposition was based on Article 8(1)(b) and (5) of Regulation (EU) 2017/1001, arguing that the marks were similar and could cause confusion among the public.

Proceedings and decision

The Opposition Division of EUIPO upheld the opposition, leading the applicants to appeal the decision. However, the Board of Appeal dismissed the appeal, maintaining that there was a likelihood of confusion between the marks, particularly for the Slovak, Slovenian, Hungarian, and Czech non-English-speaking public.

The applicants challenged this decision before the General Court, arguing that the Board of Appeal erred in its assessment of the likelihood of confusion, particularly regarding the distinctiveness of the word 'fly' and the geographical terms 'Dubai' and 'Persia'.

General Court's assessment

The General Court examined whether the Board of Appeal correctly applied Article 8(1)(b) of Regulation 2017/1001. It found that the Board of Appeal had indeed erred in its assessment, particularly in overestimating the distinctiveness of the earlier mark and the similarity between the marks.

The Court noted that the word 'fly' is commonly used in the airline industry and would not be perceived as distinctive by the relevant public. Furthermore, the geographical terms 'Dubai' and 'Persia' were not distinctive enough to cause confusion, as they are commonly used to refer to locations rather than indicating commercial origin.

Conclusion and implications

The General Court annulled the decision of the Board of Appeal, concluding that there was no likelihood of confusion between the marks. This decision highlights the importance of assessing the distinctiveness of common industry terms and geographical references in trademark disputes.

The case underscores the necessity for trademark applicants and opposers to provide substantial evidence of distinctiveness and potential confusion, especially when dealing with terms that are widely used in the industry.

Learn More

For more information on trademark disputes and the assessment of likelihood of confusion, see BeCivil's guide to English Data Protection Law.