As cycling fans across the globe eagerly await the Grand Départ of the 111th Tour de France on Saturday 29 June (myself included!), the Tour owners have been grinding their own uphill battle in EU opposition proceedings.
The General Court recently handed down its Judgment in opposition proceedings that the Société du Tour de France filed against German gym chain FitX's application for the figurative mark TOUR DE X.
The opposition was filed back in 2017 on the grounds that Société du Tour de France felt there would be a likelihood of confusion between the marks (which covered inter alia 'sporting activities' in Class 41) and that the mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier marks. The EU IPO had previously rejected the opposition in its entirety in April 2019, a decision that was then upheld by the Board of Appeal (BoA).
The Société du Tour de France appealed the BoA's Decision to the General Court; however, in its Judgment handed down on 12 June, the Court dismissed the appeal. The Court firstly held that, even though the services were identical, the public would not be confused given the low degree of similarity between the marks, particularly due to the low level of distinctiveness of the common element 'tour de'. It further held that, as the element 'tour de' was common in the context of cycling competitions, it would not connect the two marks, even despite the reputation of the Tour de France.
The Decision is a fresh reminder that marks are unlikely to be found similar where the common element has weak distinctive character.
The only common element between the marks – 'tour de' – has a weak distinctive character and the degree of similarity between the marks is low.
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