- Published: 05 September 2017
In June 2012 an application was filed to register the mark SPORT SEGATEX + DISEŇO under N.2012-20726 in class 25. Bermeo represented SPEEDO HOLDINGS B.V. in the opposition based of its famous BOOMERANG DESIGN. The IP Office issued an official decision which accepted the opposition filed and rejected the registration of SPORT SEGATEX + DISEŇO.
Counterparty appealed the resolution which rejected the trademark application SPORT SEGATEX + DISEŇO. As the main arguments in their defense, they asserted that their design was a semi orbit having different angle measurements, colors and fonts. They filed a very thorough chart including all the details about measurements and pantone colors.
The Appeal Board of the IP Office reviewed the examination guidelines when comparing a word + design mark vs a design mark. They stated that even though most of the times, the word elements of a mark are the most distinctive because these are the ones used by the consumers to order a product, Speedo’s BOOMERANG DESIGN by itself was distinctive enough for the consumers to associate it with its business origin. While they correctly concluded that there were no similarities in the word elements, they also stated that the consumers’ will not be so exhaustive to check all the details and they may confusingly believe that the design is in fact a red boomerang.
On May 08, 2017, the Appeal Board of the IP Office decided that once the marks have been compared as a whole, considering the similarities rather than the differences, and from the consumers point of view, the marks are confusingly similar. The IP Office finally rejected the appeal and rejected the registration of trademark SPORT SEGATEX + DISEŇO.