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The Figurative Element of a Trademark and Its Dominance

In the case of MBank S.A. Vs. European Merchant Bank UAB (EMBANK), the central issue revolved around the figurative element of a trademark and its dominance in determining the likelihood of confusion. This article provides a detailed analysis of the case and its implications for trademark law within the European Union.

The case at hand pertains to a trademark dispute between MBank S.A. (hereafter referred to as the petitioner) and European Merchant Bank UAB (hereafter referred to as the intervener). The dispute arises from the registration of the mark "EMBANK" with a figure element by the intervener on April 9, 2019. Subsequently, the petitioner filed a request for the invalidity of this mark with the European Union Intellectual Property Office (EUIPO) on October 23, 2019, based on the existence of an earlier EU figurative mark, "MBANK," registered on October 3, 2018.

The Case Proceedings:
On July 16, 2020, the Cancellation Division initially upheld the petitioner's request for a declaration of invalidity, primarily based on the existence of the earlier MBANK word mark registered in Poland. However, this decision was later set aside by the Board of Appeal, and the plea for a complete declaration of invalidity was denied, a decision subsequently affirmed by the Fifth Board. The case then progressed to the Eighth Board.

The Dominance of Figurative Elements:
The pivotal aspect of the Eighth Board's decision lay in its consideration of the dominance of the figurative element in trademarks when assessing the likelihood of confusion. The board emphasized that the overall impression given by the signs, specifically their distinctive and dominant elements, must be taken into account in this assessment, encompassing visual, phonetic, and conceptual similarities.

In this particular case, both the petitioner's earlier MBANK mark and the intervener's EMBANK mark contained both a letter element (the word "BANK") and a figure element (the figurative part of the mark). However, the Eighth Board made a noteworthy determination. It held that the figurative feature of the intervener's mark was the most distinctive aspect of the challenged mark.

This decision was significant because it effectively eliminated any chance of confusion between the two marks. The figurative element of the contested EMBANK mark was described as unrelated to the services it represented, making it the dominant feature. Consequently, the figurative element's lack of relevance to the services rendered the marks distinct from each other.

Implications for Trademark Law:
The MBank S.A. case highlights the importance of considering the dominance of figurative elements within trademarks when assessing the likelihood of confusion. Trademark law, particularly in the European Union, emphasizes a holistic evaluation of marks, encompassing visual, phonetic, and conceptual aspects. This approach ensures that trademarks are protected not only in their letter element but also it's figurative element in terms of their most distinctive and dominant features.

Furthermore, this decision underscores the principle that trademark distinctiveness can be influenced by factors such as the relevance of figurative elements to the goods or services in question. In cases where a figurative element lacks significance and is unrelated to the core business activities, it may emerge as the dominant element, ultimately preserving the distinctiveness of the mark.

The concluding Note:
The MBank S.A. Vs. European Merchant Bank UAB case serves as a valuable precedent in trademark law, shedding light on the significance of the figurative element's dominance when assessing the likelihood of confusion. By emphasizing the relevance of the dominant features and their impact on distinctiveness, this decision contributes to the evolving landscape of trademark protection within the European Union.

Case Law Discussed:
Case Title: M Bank S.A Vs European Union Intellectual Property office
Date of Judgement:12/07/2023
Case No. T-261/22
Neutral Citation No: NA
Name of Hon'ble Court: THE GENERAL COURT (Eighth Chamber)
Name of Hon'ble Judge: Kornezov, President, G. De Baere (Rapporteur) and S. Kingston, Judges,

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539

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