This case addresses the recent decision of the EUIPO Second Board of Appeal in the opposition filed by the brand SHOPIFY against the Trade Mark Shopee. The decision is particularly relevant as it deals with two marks featuring weak descriptive elements. In its initial decision on January 30, 2024, the Opposition Division rejected the opposition against the registration of the SHOPEE mark. The opposition was dismissed as the division found that the risk of confusion was limited, given that the word element “Shop” was considered descriptive with respect to the products and services of both marks.

Subsequently, the opponent filed an appeal against the decision, requesting that the registration be annulled and the protection of the applied-for mark be denied, arguing that both marks were similar and that the earlier mark had a high degree of distinctiveness due to its recognition in the sector.

The appeal was accepted, and the Board examined the likelihood of the relevant public associating the two marks. To do this, it considered that the consumer perceives a mark as a whole without breaking it down to analyze its individual elements. In this regard, the Board emphasized that the risk of confusion arises from the possibility that consumers may believe both products and services come from the same company or from economically linked companies, thus the circumstances of the case must be examined in detail, including their distinctiveness, capacity to identify commercial origin, products and services, and consumer perception of the mark.

  1. Firstly, the Board emphasized that the element “Shop” is descriptive, so the distinctiveness of both marks was considered low or even very low.
  2. Visually, it was determined that the descriptive nature of the word “Shop” considerably diminishes the overall similarity of the two marks. Phonetically, the Board considered that English-speaking consumers would perceive the two signs as similar, resulting in a medium degree of similarity. Conceptually, given the descriptive nature of the shared term, the similarity was considered low due to the weak distinctiveness of the term.
  3. The Board also reinforced the idea that the similarity was based on a weak element, such as the word “Shop”, making it less likely that such similarity would lead to confusion. However, it was also taken into account that Shopify had demonstrated enhanced distinctiveness, which increases the likelihood of confusion in the market.

Therefore, the Board annulled the decision of the Opposition Division and referred the case back to the Division for a comprehensive and thorough analysis in line with the case circumstances and the relevant factors described earlier, reinforcing the importance of distinctiveness when assessing the risk of confusion.

 

DECISION of the Second Board of Appeal of 5 November 2024, in case R 627/2024-2, ITM No 11 526 171 vs EUTM No 8 727 083 SHOPIFY.