EUIPO Opposition Highlights Risk of Confusion from Disemvowelled Trade Marks

The European Union Intellectual Property Office (EUIPO) Opposition Division recently upheld an opposition against the registration of “CNTRBND” as an EU trade mark, finding that there exists a likelihood of confusion with an earlier mark for “CONTRABANDO”. This ruling expressly recognises that disemvowelling has become a common marketing strategy that the public has become so accustomed to that they may instinctively insert the missing vowels when reading disemvowelled words.

In 2024, Luis Caballero S.A. filed an opposition against Cocktails & Prebatch AB’s EU trade mark application for CNTRBND in Class 33 on grounds that included a likelihood of confusion with its earlier EU trade mark for CONTRABANDO. Given the identity or similarity between the goods, the opposition centred on whether the applicant’s mark CNTRBND is similar to the earlier mark CONTRABANDO.

Seeking to differentiate its mark with the earlier mark, the applicant argued that CNTRBND has no meaning in any European language, as it is an arbitrary and fanciful name.

DECISION

Having found that the goods claimed in the application and those covered by the opponent’s earlier mark are identical or similar, the Opposition Division turned to the comparison of the marks shown below, and held

• the relevant public comprises the general consumer in the European Union, focusing on the Spanish-speaking public, as the earlier mark is a Spanish word for “smuggled goods”;
• while CNTRBND does not exist as a word in any European language, it is the disemvowelled version of the Spanish word CONTRABANDO;
• disemvowelling, meaning a technique of removing vowels from words, has become a common marketing strategy that the public has grown accustomed to, either in brand names or promotional phrases;
• the public is so familiar with disemvowelling that they may instinctively insert the missing vowels in disemvoweled words; and
• at least a non-negligible part of the relevant public is therefore likely to associate both signs with the Spanish word CONTRABANDO.

The Opposition Division concluded that the marks are visually similar and phonetically and conceptually identical, emphasising that both marks will be associated with the same concept and likely to be pronounced in the same way. In reaching this conclusion, the Opposition Division noted that it is very cumbersome to pronounce consonants individually, and it is more likely for the relevant public to insert the missing vowel sounds when pronouncing the mark.

The Opposition Division therefore found a likelihood of confusion and rejected the application.

COMMENT

This decision underscores the importance of considering the impact of branding techniques such as disemvoweling, as regulators and consumers may readily reconstruct the original word and its meaning. A trade mark applicant should exercise caution when applying for marks that constitute abbreviations or disemvowelled words.

Furthermore, the acknowledgement of the public’s knowledge of disemvowelling will provide more comfort and security to brand owners of well-known marks against copycats that try to circumvent trade mark laws by filing for shorter variations of famous marks.