“Panic” in the Disney castle: the trademark DISNI was recently filed in the European Union. Disney, of course, filed an opposition against this application.
The opposition was based on older Disney trademarks registered for various products and services. In order to ensure that the entire application would be rejected Disney also based the opposition on the reputation of the Disney trademark (besides a likelihood of confusion between the trademarks). A clever safety net: in the event the EUIPO is of the opinion that some products or services are dissimilar, Disney has a plan B.
The EUIPO assesses the opposition and comes to the conclusion that the trademarks are visually and aurally similar. The element “DISN” corresponds and in English the trademarks have the same pronunciation. The products and services correspond for a large part. But not every service is found to be similar. So, the intended safety net of Disney was smart, only the safety net did not work in this case: Disney does not succeed in demonstrating its reputation. The submitted evidence does not show where the mark was used, when the mark was used and what the extent of this use is. The only fact that everyone knows Disney is not enough, the reputation must follow from the evidence.
As a result, the opposition has been largely honored but not for all services. Disney must allow the DISNI registration for, among other things, the sale of toilet paper. The lesson learned is that even worldwide reputed trademarks do have to demonstrate their reputation.
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“Trademark protection gives freedom to do business.”