[Guest post] Navigating trade mark oppositions: the risks of weakly distinctive marks and late claims

by Nedim Malovic

UltraKat

In the context of linguistic expression, the term “ultra” refers to something bold and superlative, which goes “beyond” (this is what the Latin word literally means). Being nothing more than a generic praise, unless paired with some unique elements, potential trade mark applicants looking to capitalize over the said term will likely find it challenging to secure exclusivity.

Paradoxically, in the event that a stakeholder has successfully managed to secure trade mark registration, the exclusivity over the term may still be limited due to its low degree of inherent distinctiveness.

This interplay was at the heart of the EUIPO Fifth Board of Appeal (Board’s) recent decision (R 1836/2023-5) in which the Board rejected an opposition by Ultra Enterprises Inc against the trade mark “Toronto Ultra”, concluding that there was no likelihood of confusion with the earlier marks held by Ultra Enterprises.

The decision underscores both the challenges associated with trade marks that have weak distinctive characters and the risks of introducing new claims for the first time at the appeal stage. It serves as a clear reminder for trade mark practitioners to present all relevant arguments and evidence during the initial proceedings, rather than to wait for the appeal phase.

In September 2019, Canada Inc (the applicant) sought to register “Toronto Ultra” as an EU trade mark (EUTM) for goods and services in Classes 9 (cases for handheld devices), 16 (bookmarks), 18 (backpacks), 25 (caps), 28 (action figures), 41 (educational services), and 42 (entertainment services) of the Nice Classification.

In 2020, Ultra Enterprises filed an opposition pursuant to Article 8(1)(b) of the EU Trade Mark Regulation (EUTMR), on the basis of the following earlier EUTM’s covering same goods and services as above: “Road To Ultra”, “Ultra Musicfestival”, “Ultra Music Festival”, and “Ultra Europe”.

In 2023, the Opposition Division rejected the opposition in its entirety on the ground that there was no likelihood of confusion. It found that, while the signs shared the term “ULTRA”, this element is commonly perceived as a laudatory term and, thus, weakly distinctive. The additional elements in each mark (e.g., “Road to”, “Music festival”, “Europe”, and “Toronto”) were sufficient to differentiate the earlier marks from the applicant’s mark. The Opposition Division also determined that, even assuming that the goods and services were identical, the differences between the marks outweighed their similarities.

Ultra Enterprises appealed to the EUIPO Fifth Board of Appeal. There, it also raised a new claim related to enhanced distinctiveness of its earlier marks.

The Board upheld the Opposition Division’s decision, confirming that there was no likelihood of confusion between the signs pursuant to Article 8(1)(b) EUTMR. In line with the Opposition Division’s findings, it found that the term “ULTRA” was weakly distinctive and often perceived as a laudatory term and that the additional elements in each earlier mark (e.g., “Road to”, “Music festival”, “Europe”, and “Toronto”), created sufficient differences to avoid confusion between the signs.

Furthermore, the Board also rejected the opponent’s claim of enhanced distinctiveness, stating that this argument and the supporting evidence were submitted too late in the proceedings and could not be considered. The Board referred to Article 27(3)(b) of the Commission Delegated Regulation (EUTMDR), which requires that claims of enhanced distinctiveness be presented in due time during the opposition proceedings. In this regard, the Board pointed out that late-submitted evidence may only be accepted if it meets specific conditions - namely, if it supplements earlier evidence or is necessary to contest findings made in the first-instance decision.

Even if the evidence had been admissible, the Board noted that the newly submitted exhibits (namely social media statistics, festival lineups etc) were not relevant for proving enhanced distinctiveness at the relevant time, as they referred to events and statistics from after the date of filing of the contested application.

Consequently, the Board confirmed that the distinctiveness of the earlier marks had to be assessed solely on their inherent qualities, finding them to have, at most, a low degree of distinctiveness due to the weak nature of the common element “ULTRA”.

The appeal was therefore dismissed in its entirety.

The decision reinforces the risks associated with seeking trade mark protection for commonly used or laudatory terms, which, on their own, are unlikely to receive protection. Trade mark holders relying on such terms in their branding may face difficulties in preventing third parties from using or filing marks containing such expressions.

Another key takeaway relates to the necessity for trade mark practitioners to present all relevant arguments and supporting evidence during the initial opposition stage. The Board’s refusal to consider the late-submitted claim of enhanced distinctiveness serves as a stark warning that procedural deadlines must be strictly followed, or arguments risk being deemed inadmissible.

Finally, even when goods and services are identical, a likelihood of confusion requires more than just a shared weak element. The present decision reinforces this principle.