Legal update on the application of the EUIPO’s Similarity Tool

This article was first published on PTMG.

Rights holders and practitioners involved in EU trade mark disputes have long benefited from the use of the EUIPO’s “Similarity Tool”. This is a searchable database of findings from various EU trade mark offices (including the EUIPO) concerning the similarity of goods and services.

The Tool indicates the degree of similarity that has been found between two terms under comparison, ranging from “dissimilar”, “low similar”, “similar”, “high similar”, through to “identical”, and also gives reasons. For instance, according to the Tool, the EUIPO has previously found “pharmaceutical preparations” in class 5 to have low similarity with “apparatus for administering pharmaceutical preparations” in class 10, on the basis that they are complementary and coincide in their distribution channels and relevant public.

Up until very recently, the Tool had been considered by many as a useful starting point for the preparation of arguments on comparison of goods and services, but not the final word on the matter. Indeed, its own introduction to the Tool, the EUIPO writes that it: “endeavours to reflect the practice of [the participating] IP Offices but the comparisons in the tool are NOT LEGALLY BINDING upon any entity”. However, a recent decision from the EUIPO appears to cast doubt on this, holding that the Similarity Tool “must be followed” by EUIPO examiners.

The decision of 24 October 2024 concerned a request for a declaration of invalidity against EU Trade Mark Registration No. 018664521 SYMPHONY 6, registered in respect of “Alcoholic beverages, namely gin and gin-like spirits” in class 33. The applicant for invalidity brought the request on the basis that there was a likelihood of confusion between the EU registration and its earlier German trade mark registration for the mark SYMPHONIE, registered in class 33 for “wine; sparkling wine”.

The applicant argued that, according to the Similarity Tool, wine and gin are similar. However, the EUIPO responded that whilst that was a valid point and was correct at the time that the applicant had filed its arguments, the position had since changed such that at the time of the decision the Tool indicated that they are dissimilar. The EUIPO held that it was compelled to follow the Tool as it currently stood, and so the application for invalidity must be rejected on the basis that the goods were dissimilar.

Following this decision the Similarity Tool must be viewed in a very different light. Whilst previously parties to EUIPO proceedings might use the Tool to help inform their arguments on the comparison of goods and services (including identifying potential counterarguments that could be raised by the other side or EUIPO), the decision seems to render the parties’ own arguments irrelevant, as the EUIPO will be compelled to follow the Tool (rather than simply taking its findings into account). Moreover, the fact that the EUIPO must follow the findings of the Tool as they are at the date of the decision introduces considerable legal uncertainty for all parties.