A Unique Image of a Trademark Is Not Enough to Prove That Trademarks Are Not Confusingly Similar

Authors: Mykolas Jakutis, an Assistant to Attorney-at-Law at METIDA, Inga Lukauskiene, an Associate Partner, an Attorney-at Law and a Patent Attorney at METIDA

Those who like to copy other trademarks should take a note: visual trademark elements no longer help to prove the similarity of trademarks, if the verbal part is identical or similar to another trademark. A while ago figurative trademark’s elements were recognized as decorative and having no influence on consumers’ overall perception, while verbal elements have been considered as the key components of a trademark. However, when the trademarks were assessed as a whole, there was a constantly occurring debate on how much figurative trademark’s elements have impact on analyzing if the particular trademarks are similar. Quite often controversial decisions were made regarding this issue. The judgement of the General Court of 6th December 2013 regarding the likelihood of confusion caused by the figurative trademark “ECO FORTE” and the verbal trademark “ECOFORCE” should put an end to this discussion. The General Court held that the Boards of Appeal of The Office of Harmonization for the Internal Market (OHIM) came to the right conclusion by recognizing that these trademarks can cause the likelihood of confusion.

Trademarks in comparison:

Untitled

The Applicant “Premiere Polish Co” Ltd filed a Community trademark application regarding the registration of the verbal trademark “ECOFORCE” for class 3 goods. However, the proprietor of the earlier European Community figurative trademark “ECO FORTE”, “Donau Kanol GmbH & Co” KG, filed an opposition on the grounds of the likelihood of confusion. The Opposition Division of the OHIM satisfied the complaint and stated that the comparative trademarks may cause the likelihood of confusion. The applicant appealed against the decision of the Opposition Division to the Boards of Appeal, however, the latter rejected the appeal and stated in its decision that the trademarks are confusingly similar due to the following reasons:

  • a weak degree of visual similarity;
  • a high degree of phonetic similarity;
  • in certain European Union countries consumers will recognize words like “eco”, “forte” and “force”;
  • figurative elements are not sufficient to state the trademarks‘ dissimilarity;
  • the goods of class 3  of both companies are identical.

The proprietor of the later trademark appealed to the General Court against this decision made by the Boards of Appeal asking for annulment of the decision and recognition of these trademarks as dissimilar, however the complaint was rejected and the decision of the Opposition Division of the OHIM remains in force. Taking everything into account, it was concluded that the Board of Appeal came to the right conclusion that the marks are confusingly similar and can cause the likelihood of confusion considering the high phonetic and the low visual similarity between the trademarks. The court held that the visual elements of the previous trademark ECO FORTE only have a decorative function, they are not distinctive or original, only yellow and green colors were used, the verbal elements can be easily read and understood. And thus, the visual elements will not have any impact on the overall consumers‘ perception. With regard to the phonetic similarity of the trademarks, the court held that there was a high degree of phonetic similarity, since not only trademarks‘ constituent letters, but also the syllables of the verbal elements are arranged in the same sequence. The court also held that the trademarks composing words “forte” and “force” have a similar meaning, therefore, they are semantically similar.

This court‘s decision is a useful reminder that the figurative elements of a trademark must be prominent and very distinctive in order to influence the visual comparison of the trademarks. However, they may not be sufficient to eliminate the similarity of the trademarks if their verbal elements are identical or very similar.

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