In a recent ruling issued on 15 November, the General Court of the European Union (CJUE) rejected the trade mark application of the Madrid company Portal Golf Gestión. The refusal was based on the possibility of confusion with the well-known US company Augusta National, which specialises in the management of products and services related to golf and the organisation of tournaments.
In December 2018, Portal Golf Gestión sought to register the trade mark "imaster.golf" with the European Union Intellectual Property Office (EUIPO). The trade mark consisted of the combination of a figurative elements (a multi-colour circle) over the word element “imaster.golf, and covered a wide range of goods and services, from computer software to golf course management, software updates and intellectual property licenses, covered by classes 9, 38, 42 and 45 of the Nice Classification.
The opposition by Augusta National, Inc. was based on its registered EU trade mark 'MASTERS', claiming that there was a likelihood of confusion between the two signs, and that its own earlier mark had a reputation of which Portal Golf Gestión was seeking to take advantage, as per 8(5) of the European Union Trade Mark Regulation (EUTMR). The EUIPO Opposition Division upheld the opposition on the ground that the mark 'imaster.golf' would take unfair advantage of the reputation of 'MASTERS' for 'golf tournament type entertainment services' in Class 41. Despite the appeal filed by Portal Golf Gestión, the EUIPO Board of Appeal upheld the decision of the Opposition Division, considering that the mark applied for would create a likelihood of association and take unfair advantage of the reputation of "MASTERS".
Recently, the GC confirmed the decision, highlighting the similarity of the goods and services, the likelihood of confusion and the reputation of the earlier mark, particularly in the field of golf tournaments.
Portal Golf Gestión sought to argue that the “MASTERS” earlier trade mark should never have been registered in the first place, as it lacks the necessary distinctiveness to be registered as a trade mark. The Court rejected Portal Golf Gestión's objections, stating that absolute grounds for refusal, such as lack of distinctiveness under Article 7(1)(b) EUTMR, are not applicable in opposition proceedings, and that in order to have the trade mark removed, Portal Golf Gestión should have filed an invalidity claim.
On the comparison of the signs. The GC held that the Board of Appeal did not make any errors of assessment in concluding that there was visual and phonetic similarity between the conflicting signs. The 'master' element of the mark reproduced most of the letters of the earlier mark. Although there were additional elements, such as the letters 'i' and 'golf', the distinctive presence of the 'master' created a visual similarity which prevailed. Despite the difference in the number of syllables, the pronunciation of 'mas' and 'ters' remains similar, particularly in languages in which the final 's' is not pronounced. Although the mark applied for, 'imaster.golf', had four syllables, the phonetic identity was centred on the component 'master' even though their distinctiveness was below average, and conceptual similarity, which was considered to be weak.
The Court held that the Board of Appeal was not wrong in stating that while the marks were not highly similar conceptually, (due to the inclusion of the visual element and the letter “I” and word “golf”), a conceptual link was maintained by the common element 'master' and there was therefore a real likelihood of association by the consumers between the two marks as they both referred to golf.
In conclusion, the GC upheld the decision of the Board of Appeal and refused the registration of the "imaster.golf" trade mark in favour of Augusta National's earlier mark "MASTERS" which it accepted had a reputation (thereby lowering the thresholds related to similarity), thus upholding the protection of the reputation of the earlier mark in the specific field of golf tournaments.