Shopping at Shoppi remains possible
In a recent case, a conclusion was reached on the likelihood of confusion between the figurative mark ‘Shoppi’ and the word mark ‘SHOPIFY’. Indeed, the earlier trademark, e-commerce platform Shopify, filed an opposition to the filing of figurative trademark Shoppi, a community platform that lets travelers discover local entrepreneurs while traveling, because of risk of confusion between the two.
However, the EU (European Union) Court of Justice indicated that the common element ‘Shop’ is considered descriptive. A term descriptive for the goods or services offered under the trademark cannot be registered. An exclusive right of use of such term would give too great a monopoly and prevent free trade.
Because both trademarks consist mainly of such a descriptive word, they are labeled as "weak trademarks", and the role of the descriptive element is limited when comparing the trademarks. The likelihood of confusion in weak marks is possible, but only in the case of a high degree of similarity between the marks. Weak brands inherently have little distinctiveness.
Shopify's argument that they had acquired sufficient distinctiveness through use also fell flat. Since it constituted a use in the UK, this no longer applies as an argument to prove distinctiveness in the EU. The fact that the UK was still a member of the EU at the time of Shoppi's registration is not sufficient. Namely, the impugned decision of the Board of Appeal is from a later date than the transition period. Thus, they were correct in their decision not to consider the UK as a relevant public.
The Court confirmed that there is no risk of confusion between the marks
To summarize: the stronger the initial distinctiveness of the mark, the more likely it is that likelihood of confusion with newer marks will be accepted. Shoppi has already taken this advice to heart and further adapted their logo.
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