The EU General Court has confirmed that two marks can coexist despite some visual and phonetic similarities. Why? Because overall impression matters.

Contested V-Mark
Certification Mark

The EUIPO General Court (GC) has upheld the EUIPO Second Board of Appeal ("BoA") decision maintaining the validity of a mark, as the earlier Certification Mark was found to have weak distinctive character limiting its scope of protection, despite the similar colour scheme and capital letter “V”.

Background:

V-Label GmbH applied for a declaration of invalidity of the Contested V-Mark above on the basis that it was confusingly similar to its earlier Certification Mark. 

The Cancellation Division initially found that there was no likelihood of confusion as the marks conveyed a different overall impression to the relevant public. 

V-Label GmbH appealed to the BoA and then to the GC. 

The GC Decision (in brief):

• Distinctive Character: the earlier Certification Mark had, at best, weak inherent distinctive character. The stylised “V” and plant imagery were considered either descriptive or of low distinctiveness in the context of vegan and vegetarian products. 

• Invalidation actions are confined to the marks as registered: the BoA and GC looked at the signs as filed/registered, not marketplace variants used by the respective parties. 

• Likelihood of Confusion: Despite arguments that there were conceptual, visual and aural similarities (the letter  “V” and use of green and yellow colours), these shared elements had no, or at best weak distinctive character.  The evidence submitted was not sufficient to establish enhanced distinctive character through use and the overall impression of the marks was sufficiently different (a rounded “V” with leaf in a circle vs a bold, straight‑line “V” with added elements and wording).

• Acquired Distinctive Character and Reputation: V-Label GmbH’s arguments of enhanced distinctiveness of the Certification Mark (and reputation) were not proven and the evidence submitted was found insufficient to determine what portion of the relevant public recognised the mark as registered, or for which specific goods or services. 

Why it matters for brand owners:

• Likelihood of confusion is assessed globally, not on isolated similarities. 

• Marks with weak inherent distinctiveness may be afforded more limited protection, so evidence of enhanced reputation can be key, and evidence needs to be jurisdiction specific. 

• Even identical specifications of goods / services are not enough to tip the balance and find confusion where the common elements are of weak distinctive character. 

• Brand owners should file and use marks consistently. Differences between how a mark is registered and how it is used can impact the strength of similarity arguments at registry level.

Our thoughts: 

This decision underscores the global assessment approach and the limits of relying on conceptual similarity alone, particularly when dealing with a crowded market (like quality labels). A strong and effective brand strategy starts with distinctive sign, reliable clearance before commencing use and seeking registration, and ensuring robust brand documentation so that you are “evidence ready” if required. 

Want to stress‑test your label or logo? Our IP team advises on clearance, filing, and enforcement in the UK and before the EUIPO. 

If you have any questions or would like to discuss any of the matters raised in this article, please get in touch with Amy Salter or another member of the Burges Salmon IP team.

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