In October 2019, Google LLC sought to register the EU word mark “GPAY” for a variety of goods and services under Classes 9 and 36. EPay AD, a company based in Sofia, Bulgaria, opposed the registration, citing its earlier registered Bulgarian figurative mark “ePay,” which also covers electronic payment services. The opposition was based on Article 8(1)(b) of Regulation (EU) 2017/1001, which addresses the likelihood of confusion due to the similarity of marks and the identity or similarity of goods or services.

Requested trademark Prior trademark
GPAY ePay

The EUIPO’s Opposition Division sided with EPay AD, recognizing a likelihood of confusion between “GPAY” and “ePay” and refusing Google’s application. Google appealed this decision, but the Fourth Board of Appeal of the EUIPO upheld the Opposition Division’s ruling. Google then brought the case before the General Court, seeking annulment of the Board of Appeal’s decision.

Court’s Analysis and Findings

Relevant Public and Level of Attention: The General Court defined the relevant public as both the general and professional public in Bulgaria, who would be reasonably observant and circumspect. Given the economic importance of electronic payment services, the court noted a relatively high level of attention among this public.

Comparison of Goods and Services: The court found that the goods in Class 9 under “GPAY” (e.g., downloadable software for electronic transactions) were similar to EPay’s electronic payment services in Class 36 due to their complementary nature and overlapping end uses and distribution channels. Furthermore, the services in Class 36 under “GPAY” were identical to those covered by “ePay.”

Comparison of the Signs: Visually, the court observed that both marks share the common element “PAY” and have similar structures, contributing to an average degree of similarity. Aurally, “ePay” is almost fully encapsulated in “GPAY,” further supporting this level of similarity. Conceptually, for English-speaking consumers, both marks suggest payment services, leading to a low degree of conceptual similarity.

Distinctiveness: For the English-speaking Bulgarian public, the court determined the distinctiveness of “ePay” to be low, given the descriptive nature of “pay.” However, for non-English-speaking consumers, the term “pay” is distinctive, thus rendering “ePay” more inherently distinctive.

Likelihood of Confusion: Considering the similarities in the goods and services, the visual and aural resemblances of the marks, and the distinctiveness of the earlier mark, the General Court concluded there was a likelihood of confusion among the relevant public. This conclusion was particularly significant for the non-English-speaking segment of the Bulgarian public.

Conclusion 

The General Court dismissed Google’s appeal, upholding the EUIPO’s decision to refuse the “GPAY” mark registration. This ruling underscores the importance of comprehensive evaluations of trademark applications, particularly concerning the potential for consumer confusion and the distinctiveness of trademark elements. It also highlights the heightened scrutiny applied to marks within the financial and electronic payment sectors, where clarity and distinction are paramount.

 

Case T‑78/23 General Court of Justice-  Google LLC v.  EUIPO (intervenir EPay AD)