On February 5 th , 2020 the General Court issued a decision on the trade mark case number
T44/19 involving the opponent’s sign “Touring Club Italiano” against the contested application
“Touring Club”. The General Court ruled that the element “Touring Club”, which is common to the marks at issue, could not be considered negligible and constitutes the dominant element given the overall impression of the signs, even if somewhat week and descriptive of the services at issue. As a general rule, according to settled case-law, the public will not consider
a descriptive element forming part of a composite mark to be the dominant element of that
mark, unless specific circumstances may justify a descriptive element having a dominant
character (see judgment of 15 December 2016, Aldi v EUIPO — Miquel Alimentació Grup
(Gourmet) , T212/15, not published, EU:T:2016:746, paragraph 61 and the case-law cited; see
also, to that effect, judgment of 19 March 2015, MEGA Brands International v OHIM , C182 /14 P, EU:C:2015:187, paragraph 34 and the case-law cited). In the present case, although the trade marks may present a weak character in common, such weak element should still be taken into consideration as would not be negligible. In this respect, despite the weak element in common, there still can be a likelihood of confusion in the market, since the assessment is also based on the comparison between the goods and services covered by the signs at issue.
