Pepsi vs. Paupsy
The Benelux Office for Intellectual Property (BOIP) has recently refused a trademark application for the word mark ‘Paupsy’, as it was found to be confusing with regard to the older trademark ‘Pepsi’.
In 2021, a trademark application was filed in the Benelux to register the word mark ‘Paupsy’ for bags in class 18 and for clothing in class 25. After being informed of this trademark application, the famous multinational PepsiCo initiated opposition proceedings based on earlier ‘Pepsi’-trademarks which also had protection for the same goods.
The Office concluded that the goods of both marks were identical, an argument that was not disputed by the trademark applicant. The signs are clearly not identical, but are there perhaps enough similarities? For this evaluation, the Office uses a three-step test.
3 decisive factors
Phonetic similarity was found in the first syllable which begins and ends with a 'P' and the second syllable beginning with 'S'. Moreover, the 'I' and 'Y' ending sounds are pronounced the same by the relevant audience. The overall structure, rhythm and intonation of both marks are also similar.
Visually speaking, they refer to the 'P*PS*' structure of both marks. In addition, when it comes to pure word marks, the length of the characters, the letters of which it consists and the order in which they are placed should be taken into account. Both first letter and central element are similar here.
Conceptually, it is noted that neither mark has a distinct meaning and so no similarity can be found.
The Opposition Division refers to the standing case law, according to which the average consumer perceives a mark as a whole and does not pay attention to its individual details. Consumers must rather rely on their imperfect memory of marks.
Risk for confusion
Based on the above, the bureau (BOIP) decided that there was a risk of confusion for the consumers concerning the commercial origin of the goods. The application was therefore rejected.
Before launching a brand, it is always highly recommended to investigate broadly-identical what already exists on the market. A legal research goes further than an online search engine and maps all possible trademark obstacles. This is how you build a strong Brand that is also legally well-grounded.