Dominance of a word element in word and figurative marks

The trademark application for the EU figurative mark Delta Sport was rejected in opposition to two earlier marks, the word mark Colchon Delta and the EU figurative mark Delta. In it’s judgment, the European Court explained the dominance of the word element Delta in the word and figurative marks.

Opposition by the proprietor of the earlier mark

mark in dispute Delta Sport — EU figurative mark in dispute

The owner of an earlier trademark filed an opposition against the registration of the EU figurative mark Delta Sport. This was Delta Enterprise Corp. (USA), which relied on its own earlier figurative mark Delta and also on the earlier Spanish word mark Colchon Delta. The opposition was upheld both before the Opposition Division and the Board of Appeal of the EUIPO, but the applicant Delta-Sport Handelskontor GmbH (Germany) opposed this before the European Court (CJEU).

The Board of Appeal had argued that the attention of consumers in all three marks was focused on the word element ‘delta’. The Board of Appeal also found that the marks at issue were conceptually, visually and phonetically similar on average.

In particular, since Delta is in first place only in the mark at issue, Delta Sport, but in second place in the two earlier marks (in the figurative mark Delta behind a small heart in D, in the word mark behind Colchon (Spanish for ‘mattress’), the applicant claimed that there were clear differences between the marks.

Dominance of the word element Delta

Accordingly, the European Court considered in detail the dominance of the word element Delta in the three disputed marks. In one word mark, no element could be regarded as clearly more dominant than the other, the court explained. Therefore, not only the preceding colchon in the earlier word mark would be perceived by the consumer, but also Delta.

In the earlier Union figurative mark Delta, the figurative element with the small heart does not in any way reduce the attention to the word ‘delta’, the word element ‘delta’ being dominant in the figurative mark. In the mark applied for, Delta Sport, the CJEU found that the perception of the element ‘delta’ was average and could not be reduced or excluded either by the word ‘sport’ or by the colours used.

Phonetic similarity of the marks

However, the Court’s assessment of the phonetic similarity of the three marks was different from that of the EUIPO Board of Appeal, which had found that there was an average degree of phonetic similarity. The fact that the word ‘delta’ does not appear in the signs in question in the same order leads to a clear phonetic difference between the mark applied for and the earlier word mark, the CJEU held, contrary to the Board of Appeal’s assessment. However, the phonetic similarity between the mark applied for and the earlier EU figurative mark must be regarded as average, the Court added, since the word ‘delta’ is pronounced at the beginning of each of the marks.

According to CJEU, it follows that the Board of Appeal was right to hold, in the overall impression, that the signs at issue must be regarded as averagely similar visually, phonetically and conceptually. The Court therefore dismissed the action brought by Delta-Sport Handelskontor GmbH.