Marks held to be confusingly similar due to dominant element 'W'

The Three-Member Administrative Court of First Instance of Athens (Division 29) has upheld an opposition against the registration of the trademark YOUR W WEDDING on the grounds that there was a likelihood of confusion with the earlier trademark W (Decision 2958/2009).
Greek company Pigassos Ekdotiki Ke Ektypotiki AE applied for the registration of the mark YOUR W WEDDING (and design) for printed matter, newspapers, magazines and books in Class 16 of the Nice Classification (Application 156936).
US company Advance Magazine Publishers Inc opposed the registration of the mark before the Athens Administrative Court of First Instance based on its prior Community trademark W (and design) (Registration 00331421) for goods in Class 16. Advance Magazine also invoked various registrations for its W mark in many countries (eg, Canada, France, Japan and the United States) and submitted copies of the registrations as evidence. In particular, Advance Magazine argued that YOUR W WEDDING constituted a falsification or imitation of its W mark, since the letter 'W' was the dominant element of the mark, thus causing a risk of confusion as to the source of the goods.

Pigassos responded as follows:
  • The overall visual and aural impression of the marks was different.
  • The YOUR W WEDDING mark related to lifestyle magazines addressed to female consumers. Therefore, the mark targeted a very specific public and was unlikely to cause confusion among consumers.
The court held as follows:
  • The mark applied for, in addition to the letter 'W', also included the words 'your' and 'wedding'. However, the letter 'W' was the dominant feature of the mark, since it was written in large letters against a parallelogram background, and was placed between the words 'your' and 'wedding' so as to attract the consumers' attention.
  • The visual aspect was prevalent in this case, since both marks consisted of a combination of words and graphic elements.
  • The goods covered by the marks were similar, were intended for a similar use and targeted the same group of consumers.
Consequently, the court concluded that there was a high degree of visual and aural similarity between the marks. In light of the similarity of the goods at issue, registration of the YOUR W WEDDING mark was highly likely to cause a risk of confusion as to the origin of the goods.

Maria Athanassiadou,
Dr Helen Papaconstantinou, John Filias & Associates, Athens

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