An application for the B'lue logo, (shown above left), was rejected by the Opposition Division and the Board of Appeal, which found it confusingly similar to the earlier word registration for BLU DE SAN MIGUEL. The decision was appealed to the General Court for consideration on whether the two marks were confusingly similar, given the descriptive nature of the word BLUE.

The applicant, Danone, argued that the word BLU in the earlier registration had weak distinctive character and would be seen by the average consumer as descriptive of the colour blue. The General Court found that the word BLU in the earlier mark was evocative of a number of feelings and emotions (not dissimilar to Danone's after this decision was handed down) which went beyond mere colour.

The Court found that for most European consumers, SAN MIGUEL in the earlier registration would not be the dominant element of the mark as it consists of the second and last part, which is usually seen as less prominent or of equal prominence. For some European consumers who understand the meaning 'de' as a preposition preceding an origin, SAN MIGUEL will be seen as merely denoting an origin, and therefore BLU will be seen as the dominant and distinguishing feature of the mark. The Court went further and found that even European consumers not familiar with the meaning of 'de' would see SAN MIGUEL as an assumed descriptive Spanish word indicating the name of the commercial undertaking or location of manufacture.

The Court made the oft-repeated point that considerations regarding the granting of unfair monopolies over descriptive words are not relevant in opposition proceedings but rather are dealt with at the application stage, or in invalidity proceedings post-registration, on 'absolute grounds'. It is only necessary to consider whether the similarities between the marks could result in a likelihood of confusion, i.e. 'relative grounds'. This can be a problem when the registration in question contains enough distinctive elements to render it registrable, despite the existence of a descriptive word.

It was remarked that the 'water drop' elements contained in the B'LUE logo did not detract significantly from the element B'LUE; the addition of E in B'LUE did not alter the meaning of the word and would only be slightly perceptible; the interruption of the word BLUE with an apostrophe did not alter the meaning and was only a slightly fanciful way of spelling the word BLUE. The word BLU and B'LUE would be pronounced the same way and are phonetically identical. The Court decided that overall there was a high degree of both phonetical and conceptual similarity between the marks

Having taken into consideration the fact that sports drinks might be ordered verbally in a 'sports bar' or gymnasium, the Court ''could not rule'' out a likelihood of confusion. The opposition succeeded and the B'LUE logo was prevented from achieving registration.
Case T-803/14

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