New Orleans Pelicans, the basketball team from New Orleans, play in the NBA. The NBA Properties Inc. has filed the logo of the New Orleans Pelicans in the European Union for clothing and sporting goods, probably in view of merchandise. This application encountered however an objection of Pelikan, a well-known trademark for pens. Pelikan also refers to pelicans and uses a pelican in the logo. As confusion could occur, according to Pelikan, the opposition must be accepted. Moreover, this trademark could be detriment to the distinctive character of the mark Pelikan.
The EUIPO decided that the opposition was justified and rejected the application of New Orleans Pelicans. But NBA Properties Inc. did not give up and appealed the decision. And with success because the Board of Appeal has a whole different perspective on the matter.
The Board ruled that the argument that the invoked trademark have a reputation is too vague. The Opponent should clearly indicate which of the invoked trademarks have a reputation and thus which trademark are invoked in view on this ground. As Pelikan did not clearly indicate the trademarks, this ground is rejected.
Furthermore, the Board assessed the similarity between the marks (this applies to the word Pelikan and the logo Pelikan as shown below). In the logo of New Orleans Pelicans, the word Pelicans only plays a secondary role, according the Board. And as the graphic elements in the logo of the New Orleans Pelicans have no counterpart in the logo of Pelikan, there is no visual similarity. As an aural and conceptual similarity is also missing, the overall impression differs sufficiently. So the opposition is rejected at the end and New Orleans Pelicans scores the ultimate three-pointer.
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