Similar to a low degree

EUIPO begins by saying that the trademarks only have a very minimal visual and phonetic similarity. Another factor is that the services offered by BDO and BPO – accountancy services – are of a ‘specialised’ nature. Consumers of these services will have a high level of attention, making it easy to spot the differences, according to EUIPO.

Wordmark BDO and logo BPO: according to EUIPO, barely any similarity and no risk of confusion


Risk of confusion

Hmm. BDO and BPO almost no similarity? Yes, of course, there is a logo with BPO and – very small – the word ‘accounting’. But in this trademark the letters BPO are very prominently displayed. The difference between a D and a P, in my opinion, is minimal – especially in sound. Risk of confusion seems likely, especially when you pronounce the trademarks: BEE-DEE-OH and DEE-PEE-OH.

BDO acquired distinctiveness through use?

Acquired distinctiveness

It’s unfortunate that BDO could not demonstrate that their trademark BDO has acquired distinctiveness, meaning it has become highly distinctive through prolonged use. That would have significantly strengthened their position against BPO, I think. And in my opinion this trademark must have acquired distinctiveness: BDO is, after all, the fifth-largest accounting firm globally, has existed for 50 years, operates in 144 countries, and has 80,000 employees. But for some reason, EUIPO did not accept this. Maybe it’s something that can be worked on in an appeal.

Bas Kist

Banner image: ADVEN Creative, CC BY-SA 4.0, via Wikimedia Commons 

Bas Kist is mede-oprichter van Merkenbureau Chiever. Hij schrijft regelmatig artikelen over merken- en auteursrecht in de Volkskrant en Adformatie. Daarnaast is hij docent bij de European Institute for Brand management EURIB.