ENERCON held to be confusingly similar to TRANSFORMERS ENERGON

European Union
In Enercon GmbH v Office for Harmonization in the Internal Market (OHIM) (Case T-472/07, February 3 2010), the General Court has upheld a decision of the Board of Appeal of OHIM in which the latter had found that there was a likelihood of confusion between the marks ENERCON and TRANSFORMERS ENERGON.

In August 2003 Enercon GmbH filed an application to register ENERCON as a Community trademark (CTM) for goods in Classes 16, 18, 24, 25, 28 and 32 of the Nice Classification.

In November 2004 Hasbro Inc opposed the registration under Article 8(1)(b) of the Community Trademark Regulation (40/94). The opposition was based on the following earlier trademarks:
  • the CTM TRANSFORMERS ENERGON, registered for goods in Classes 16, 18, 24, 25, 28, 30 and 32;
  • the unregistered trademarks TRANSFORMERS ENERGON and ENERGON, which were used in the United Kingdom for toys and games.
The Opposition Division upheld Hasbro's opposition on the basis that there was a likelihood of confusion in respect of all the goods applied for. Enercon appealed to the Board of Appeal of OHIM.

The board rejected the appeal, agreeing that there was likelihood of confusion between the trademarks ENERCON and TRANSFORMERS ENERGON. In arriving at this decision, the board held that the goods covered by the marks were identical and that the marks themselves were sufficiently similar to give rise to a likelihood of confusion. Enercon appealed.

The General Court began by clarifying that, for the purpose of assessing the likelihood of confusion, only earlier registered marks can form the basis for the comparison. Hasbro's unregistered marks were thus irrelevant in this context because they did not fall within Article 8(1).

The court then set out the established principle that the likelihood of confusion on the part of the public must be assessed globally, which requires consideration of all the factors relevant to the case. It was necessary to consider the extent of the similarity of the goods covered by the marks (which was not disputed by the parties) and the extent of the similarity of the marks themselves. The latter required an analysis of the visual, phonetic and conceptual similarity of the marks, bearing in mind any distinctive or dominant components.

For the purposes of assessing confusion, the relevant public was deemed to consist of the general public in the European Union.

The court held that the marks themselves were similar on the following grounds:
  • There was a degree of visual similarity between the marks, taking into account the 'energon' element of the earlier mark and the single 'enercon' element of the mark applied for.
  • There was a degree of phonetic similarity between the marks, as the first two syllables ('e' and 'ner') of the single element 'enercon' of the ENERCON mark were identical to the first two syllables of the 'energon' element of the earlier mark. Moreover, with regard to the same elements, there was a high degree of similarity between the third syllables 'con' and 'gon'.
  • There was a conceptual link between the marks, as 'energon' and 'enercon' were likely to be perceived as "evoking the notion of energy".
The court then looked at the distinctive and dominant elements of the marks. It held that the board was correct in finding that neither the 'transformers' nor the 'energon' element in the earlier mark was more dominant or distinctive than the other. Hasbro's attempts to argue that 'transformers' was the dominant element of TRANSFORMERS ENERGON because of its font and larger size was not accepted by the court. The court pointed out that the protection resulting from the registration of a word mark concerns the word in printed form in normal font, and not the specific or stylized elements accompanying the word. The action was thus dismissed.
 
The outcome of the case is not surprising. The court took the opportunity to reiterate that in assessing confusion, the comparison must be made by examining each of the marks as a whole, rather than just taking one element of a composite mark and comparing it with another mark.

Rachael Sharples and Chris McLeod, Hammonds LLP, London 

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