ECOBLUE is confusingly similar to BLUE, says CFI

European Union

In ecoblue AG v Office for Harmonization in the Internal Market (OHIM) (Case T-281/07, November 12 2008), the Court of First Instance (CFI) has dismissed an appeal against a decision of the First Board of Appeal of OHIM in which the latter had held that there was a likelihood of confusion between the marks ECOBLUE and BLUE.

In September 2002 ConCapital GmbH applied to register the word mark ECOBLUE as a Community trademark (CTM) for various business and financial services, among other things, in Classes 35, 36 and 38 of the Nice Classification. The application was subsequently assigned to ecoblue AG. Banco Bilbao Vizcaya Argentaria SA opposed the application, alleging that there was a likelihood of confusion with eight earlier CTMs containing the word 'blue', including the mark BLUE itself, for goods and services in Classes 9, 36 and 38.
The Opposition Division of OHIM upheld the opposition and ecoblue appealed. The First Board of Appeal dismissed the appeal, holding that:
  • the marks ECOBLUE and BLUE were visually and phonetically similar to a certain extent;
  • the component 'eco' was not sufficient to distinguish the two signs significantly; and
  • the services for which ecoblue sought registration were identical or similar to those for which Banco Bilbao had registered its marks.
In light of those findings, the Board of Appeal concluded that the likelihood of confusion was established. ecoblue appealed, seeking to annul the board's decision.

After summarizing existing law, the CFI held that, in this case, the dissimilarity between the marks at issue - resulting from the presence of the word element 'eco' in ecoblue's mark - was insufficient to counteract the similarity deriving from the identical nature of the most important part of the marks. Consequently, the Board of Appeal had correctly held that the marks ECOBLUE and BLUE were visually and phonetically similar to a certain extent.
In addition, the CFI concluded that since the Board of Appeal had taken into account only the trademark BLUE, and not the entire range of CTMs registered by Banco Bilbao, it could not be said that the board had misapplied the law regarding the comparison of an applicant's mark with a series of earlier marks.
The CFI thus dismissed ecoblue's action.
Jeremy Phillips, IP consultant to Olswang, London

Unlock unlimited access to all WTR content