EU General Court dismisses Google’s appeal in trade mark dispute

In a recent judgment of 12 June 2024 (T-78/23), the General Court of the European Union ruled on a trade mark dispute concerning the EU trade mark "GPAY" and the earlier national trade mark "ePay".

In October 2019, the tech company Google LLC applied to the European Union Intellectual Property Office (EUIPO) to register the word mark "GPAY" as an EU word mark, covering several goods and services in Classes 9 and 36 of the Nice Classification, such as payment options, money transfers and electronic commercial transactions. However, the Bulgarian company EPay AD filed an opposition based on the likelihood of confusion with its earlier national figurative mark "ePay", which mainly covers machines and mechanisms for coin-operated apparatus, financial and monetary affairs in Classes 9 and 36.

The Opposition Division and the Board of Appeal of the European Union Intellectual Property Office (EUIPO) found that there was a likelihood of confusion between the marks at issue. First, the Opposition Division confirmed that the Bulgarian company had effectively proved genuine use of its mark in relation to electronic payment services falling within the categories of 'financial affairs' and 'monetary affairs' in Class 36. In addition, the Board of Appeal held that the goods covered by the trade mark applied for, GPAY, were moderately similar to the electronic payment services covered by the earlier trade mark, ePay, while the services were identical. Secondly, the Board of Appeal considered that the signs in question were moderately similar overall. Thirdly, it concluded that the distinctiveness of the earlier mark ranged from average to high, depending on the level of English proficiency of the relevant Bulgarian public.

The General Court of the European Union had to determine whether there was a likelihood of confusion between Google's trade mark application 'GPAY' and the EPay AD's earlier trade mark 'ePay'.

The Court upheld the EUIPO's decision that the services covered by the trade marks were similar, as both of them are related to electronic payment services, implying an overlap in the scope of services offered. As regards the similarity of the signs, the Court noted that, despite the difference in the initial letters ('G' in GPAY and 'e' in ePay), the presence of the common element 'pay' resulted in an average similarity between the signs. In addition, the Court pointed out that the sound of the mark ePay was fully incorporated into the mark applied for, GPAY, with the exception of the letter 'G'. Therefore, the General Court concluded that there was a high likelihood of confusion between the conflicting marks and rejected Google’s appeal and trade mark application