5th September 2025

Written by Milena Velikova

Trade Mark Attorney, Milena Velikova summarises an annulled decision. This article, entitled “Game On”, was written for the Chartered Institute of Trade Mark Attorneys (CITMA) which you can access in the closing paragraph below.

Key points

In certain circumstances, descriptive elements that make up one of the words in a mark need to be taken into consideration when assessing likelihood of confusion

Just because one portion of the mark is descriptive, it does not mean that it should automatically be discounted, or the mark dissected for the purposes of comparison of marks

The descriptive element is not insignificant in the overall impression produced by the mark in question

Introduction

The Applicant, Versiontech, Inc – an online gaming accessories retailer – sought the annulment and alteration of a decision of the Board of Appeal (BoA). The Intervener, Verizon Trademark Services LLC, filed an application for a declaration of invalidity against the Applicant’s word mark for ‘VersionTech’ in classes 9 and 11, based on its earlier word mark for VERIZON. The invalidity proceedings were directed against all of the goods covered by the VersionTech mark.

The Cancellation Division rejected the invalidity on the basis that the marks were not sufficiently similar to be considered confusing on the part of the relevant public, even though some of the goods were identical. On appeal, the BoA reversed the decision, concluding there was a factual likelihood of confusion in relation to the identical goods in class 9.

Assessment: likelihood of confusion

The General Court (GC) did not reassess the conclusion of the BoA relating to the relevant public and the level of attention, since the Applicant took into consideration neither the BoA’s assessments regarding the variation in the relevant public’s level of attention, influenced by the relevant goods, nor the considerable differences between the relevant goods relating to price, technical sophistication and lifespan. The GC agreed that the level of attention of the general public varied from average to high, depending on the nature of the goods.

Comparison of goods and marks

The GC agreed with the BoA’s conclusion on the similarity of the goods, namely that part of the goods in class 9 were identical to the goods covered by the VERIZON mark.  The GC considered the dominant and distinctive elements of the marks under comparison and concluded:

1.  Even if one of the words making up a mark is descriptive, this does not in itself mean that the descriptive word in question is insignificant when assessing the overall impression produced by the mark. The element ‘Tech’ within VersionTech, even though it would be seen as descriptive of the goods covered, does not make the first element ‘Version’ more distinctive in respect of the relevant goods. However, in this case, as the mark was presented as one word, the descriptive element should also be taken into account when comparing the marks.

2.  The marks were visually similar only to a low degree, because of the different lengths of the marks and the absence of a significant number of common letters placed in the same order in those signs, even though the element ‘Tech’ is devoid of any distinctive character.

3.  The marks were phonetically similar to a low degree, because they differ considerably both in their second syllables and in their endings, and they also have a different rhythm and intonation.

4.  The marks were conceptually dissimilar, because VersionTech has a meaning from the perspective of the relevant public, and VERIZON has no meaning.

Conclusion

The GC annulled the BoA’s decision and concluded that, despite the identity or similarity of the goods covered by the marks at issue, and the normal inherent distinctiveness of the earlier mark, there was no likelihood of confusion. The GC also considered a second head of claim in which the Applicant requested the Court to maintain the registration in its entirety. That was considered to be a request to dismiss the Intervener’s appeal to the BoA. The GC pointed out that while it has the power to alter decisions under appeal, it cannot substitute its own reasoning or carry out an assessment on an issue on which the BoA has not adopted a position. In the present case, the only position that the BoA had taken, and which was the subject of the appeal to the GC, was the decision on a likelihood of confusion, and, as such, it was appropriate, by altering the decision on likelihood of confusion, to also dismiss the Intervener’s appeal to the BoA.

This article was written for the Chartered Institute of Trade Mark Attorneys (CITMA),  which can be read on their website in full here – where you can also view an image of the contested trade mark. Find out more about our brand protection experience here.