In a recent decision (Opposition No. B 3 237 583), the EUIPO Opposition Division upheld an opposition filed by Bugatti International S.A. against a European Union trademark application for a figurative sign incorporating the term “PUGATTI” in Class 36 financial services.
The result was decisive: the contested trademark application was rejected in its entirety.
The dispute concerns two marks that differ by only a single letter: “BUGATTI” and “PUGATTI”. However, the reasoning of the Opposition Division offers important guidance for brand owners, particularly in the financial and insurance sectors, where consumer attention is typically high.
EUIPO Opposition Decision Overview
This decision reinforces three core principles of EU trademark law:
- Even highly attentive consumers are not immune to confusion.
- Phonetic similarity can outweigh visual differences.
- Identical services significantly increase the likelihood of refusal.
Below, we break down the key elements of the decision and what it means for businesses seeking protection in the EU.
Background on the Opposition
Who are the Parties
The opposition was filed by Bugatti International S.A., Luxembourg, proprietor of the EU word mark “BUGATTI” and part of the internationally recognized BUGATTI luxury brand portfolio (particularly well known in the automotive industry), against Pujiadi (Sanya) Investment Co., Ltd., a Chinese investment company seeking EU protection for a figurative mark featuring the term “PUGATTI” in connection with financial and property management services in Class 36.
The opponent relied, inter alia, on its earlier EU word mark registration No. 5 083 258 for “BUGATTI.”
The contested application concerned a figurative sign prominently featuring the term “PUGATTI”, together with:
- The letters “PP”
- The phrase “PROPERTY MANAGEMENT”
- Asian characters
- Framing elements
The opposition was filed under Article 8(1)(b) EUTMR (likelihood of confusion) and Article 8(5) EUTMR (protection of marks with reputation). The Opposition Division ultimately decided the case under Article 8(1)(b), making it unnecessary to assess the other grounds.
The Weight of Bugatti’s Reputation
Although the Opposition Division did not need to assess whether the earlier mark enjoyed enhanced reputation, the name “BUGATTI” is inherently distinctive for the relevant services.
Even without a finding of enhanced reputation, inherently distinctive word marks benefit from broad protection where identical services are involved. Furthermore, where a sign is already established in the market, small deviations (such as changing the first letter) may be perceived as deliberate imitation rather than coincidence. This just goes to show that, even where reputation is not formally proven, strong earlier word marks benefit from robust protection.
The Applicant’s Position
The applicant, Pujiadi (Sanya) Investment Co., Ltd., sought protection in Class 36 for a wide range of financial and investment services, including asset management, banking services, fund management, and financial transactions via blockchain.
The contested sign incorporated additional verbal and figurative elements, which theoretically could have created sufficient distance from the earlier mark. However, the Opposition Division confirmed that where the dominant and pronounceable element of a sign closely resembles an earlier word mark, additional descriptive or decorative elements may not be enough to avoid refusal.
The Legal Framework
How the EUIPO Assesses Likelihood of Confusion
To determine whether the “PUGATTI” application could proceed to registration, the EUIPO applied the structured legal test under Article 8(1)(b) EUTMR.
This provision requires the Office to carry out a global assessment of whether the relevant public is likely to believe that the services offered under the later mark originate from the same undertaking — or from economically linked undertakings — as those offered under the earlier mark.
This assessment is not mechanical. Instead, it involves weighing several interdependent factors, including:
- The similarity of the services
- The relevant public and its level of attention
- The similarity of the signs (visual, aural, and conceptual)
- The distinctiveness of the earlier mark
No single factor is decisive on its own. The EUIPO must consider how these elements interact in real market conditions, taking into account the imperfect recollection of consumers. In this case, the Opposition Division examined each of these components in turn.
1. Identical Services in Class 36
A critical starting point in the likelihood of confusion analysis was the comparison of services.
The earlier “BUGATTI” registration covered:
- Insurance
- Financial affairs
- Monetary affairs
- Real estate affairs
The contested application included a wide range of financial services in Class 36, such as asset management, banking services, capital investment brokerage, fund management, financial transactions via blockchain, and banking insurance.
The EUIPO found that “Banking insurance” was identical to “insurance” and the remaining contested service fell within, or overlapped with, the broad category of “financial affairs”. As a result, the services were considered identical.
This finding significantly narrowed the applicant’s margin for differentiation. Where services are identical, even a lower degree of similarity between signs may be sufficient to establish a likelihood of confusion.
2. Relevant Public and Degree of Attention
The EUIPO then assessed the relevant public. The services targeted both members of the general public and business customers with specific financial expertise. Because financial and insurance services may have substantial economic consequences, the level of consumer attention was considered relatively high.
However, the EUIPO Opposition Division asserted that even highly attentive consumers rely on imperfect recollection when encountering trademarks in the marketplace. Consumers rarely compare marks side by side. Instead, they retain a general memory of a mark, particularly its sound. In that context, small differences, such as a single letter, may go unnoticed by the consumer and may not be sufficient to dispel confusion, particularly where the overall structure and sound of the marks are very similar. In this case, despite the elevated level of attention associated with financial services, the strong phonetic overlap between “BUGATTI” and “PUGATTI” was considered sufficient to create a likelihood of confusion.
3. Comparison of the Signs
The central issue was the comparison between:
- The earlier word mark: BUGATTI
- The contested figurative sign: prominently featuring PUGATTI
Both terms were found to be inherently distinctive, as neither has a meaning for the majority of EU consumers. However, the additional elements in the contested sign were given significantly less weight. The phrase “PROPERTY MANAGEMENT” was considered descriptive of the services and therefore weak in distinctive character, while the framing elements were deemed banal and non-distinctive. The Asian characters, although distinctive in themselves, would not be understood by the relevant public and therefore did not meaningfully influence the conceptual impression. The letters “PP” were likely to be perceived merely as a stylized repetition of the first letter of “PUGATTI.”
As a result, the Opposition Division concluded that “PUGATTI” was the dominant and only element likely to be pronounced.
When Additional Elements Fail to Save a Confusing Mark
Under EU trademark law, the overall impression of a sign is shaped primarily by its dominant and distinctive components. Descriptive, decorative, or secondary elements do not neutralize similarity where the core verbal element closely mirrors an earlier mark.
In practical terms, adding a descriptive phrase or graphic embellishment does not cure a problematic brand name if consumers will continue to identify and refer to the sign by its distinctive word element. Because the public would primarily perceive and pronounce “PUGATTI,” the additional material did little to distance the sign from “BUGATTI.”
Visual & Aural Similarity
In comparing the signs visually and aurally, the EUIPO acknowledged that the marks were not identical, but found that their similarities were nevertheless significant. Visually, “BUGATTI” and “PUGATTI” share six of seven letters — “UGATTI” — differing only in their initial letter. Although the contested sign included additional figurative and verbal elements, the dominant verbal component remained “PUGATTI,” which closely mirrors the structure of the earlier mark. Aurally, the similarity was even stronger. The marks coincide entirely in the pronunciation of “UGATTI,” with only the initial consonant sound distinguishing them. Because the additional elements in the contested sign were either unlikely to be pronounced or were weak in distinctive character, the EUIPO concluded that consumers would primarily hear and recall the word “PUGATTI.” This high degree of phonetic overlap played a decisive role in the global assessment, particularly given the identity of services at issue.
4. Distinctiveness of the Earlier Mark
The opponent claimed enhanced distinctiveness through use. However, the Division found it unnecessary to assess the evidence of enhanced reputation because the opposition succeeded on the basis of inherent distinctiveness alone. The earlier mark was deemed to have a normal degree of inherent distinctiveness.
This is a notable aspect of the decision: the refusal did not depend on proving reputation or fame. Even without an enhanced scope of protection, the similarity between the marks and identity of services was sufficient.
The Global Assessment: Application Rejected
When all factors were considered together, the EUIPO concluded that the identity of services, combined with the normal distinctiveness of the earlier “BUGATTI” mark and the high degree of phonetic similarity between the signs, outweighed the below-average visual similarity and the relatively high level of consumer attention.
Applying the principle of imperfect recollection (namely that consumers rarely compare marks side by side and instead rely on their memory of dominant elements), the Opposition Division found a likelihood of confusion for at least part of the relevant public. Under EU trademark law, that finding alone was sufficient to reject the application in its entirety.
Implications for EU Trademark Applicants
Trademark selection is not simply a creative exercise, it is a legal risk assessment. A proposed brand name must be evaluated not only for visual distinctiveness but also for phonetic similarity, conceptual perception, dominance within composite marks, and the identity or proximity of services.
This win for Bugatti also illustrates the importance of conducting a thorough clearance assessment before filing. Minor spelling variations or stylistic modifications are often insufficient where the core verbal element remains highly similar to an existing EU registration. Early legal analysis can prevent costly rebranding, opposition proceedings, and delays in market entry.
The Importance of Experienced Trademark Counsel
An experienced trademark attorney will assess how the EUIPO is likely to conduct its global assessment and identify vulnerabilities before they crystallize into opposition or refusal. This includes analyzing dominant elements, reviewing sector-specific enforcement trends, and considering how a mark will be perceived in real commercial contexts, not merely how it appears in isolation.
This is particularly critical in defined and highly competitive industries (such as luxury goods, automotive, financial services, fintech, and asset management) where strong brand identities and established portfolios are aggressively protected. Whether defending a mark against a well-known brand or enforcing rights on behalf of one, the industry-specific experience of legal counsel can make or break a brand’s future. Counsel with deep sector familiarity can better anticipate how the EUIPO, and competitors, will approach similarity, reputation, and market perception.
MSA IP: Navigating High-Stakes Trademark Disputes in Competitive Industries
High-profile opposition proceedings, particularly in sectors such as luxury, automotive, and financial services, demand more than technical familiarity with EU trademark law. They require strategic judgment informed by industry realities and an understanding of how established brand portfolios are enforced in practice. Whether launching a new mark in a competitive market or defending a distinctive brand against imitation, experienced counsel can make the difference between registration and refusal. MSA IP advises clients across the EU on trademark clearance, opposition strategy, and portfolio protection, helping brands navigate scrutiny with confidence.
Contact MSA IP to ensure your trade mark strategy is built to withstand competition in the European market.
