TRADEMARK | The EUIPO on comparing virtual goods to real-life goods

On 8 July 2024, the Opposition Division of the European Intellectual Property Office (EUIPO) issued its decision on trademark opposition No. B 3199946 on the similarity between virtual goods and the equivalent real-life goods in trademark opposition cases. The case involved Vinicio S.r.l. (“Vinicio”), an Italian fashion company, which filed an application to register a figurative mark for its products, including virtual goods, including perfumes as an EU trademark (“EUTM”). Artessence FZC (“Artessence”) opposed the application on the basis of its own EUTM registered for some real-life goods such as perfumery. The EUIPO found that, although some of the goods covered by Artessence’s registration were the real-life counterparts of the virtual goods covered by Vinicio’s application, this was not per se sufficient to confirm a similarity between the goods. The EUIPO highlighted the need for the opposing party to present concrete evidence to show why the goods are similar (e.g. sharing the same distribution channels or targeting the same relevant public). Indeed, pursuant to Article 95(1) of Regulation (EU) 2017/1001 of 14 June 2017 on the European Union trademark, the assessment on similarity must be limited to well-known facts, which may not be present in relation to virtual goods, since, due to the novelty of technologies associated with these goods, a certain market practice cannot be considered established.

Newsletter n. 99 – August/September 2024