ENIT marks can coexist as they apply to dissimilar goods and services

European Union

The Opposition Division of the Office for Harmonization in the Internal Market has rejected an opposition filed by A-Invest SA - the owner of the Spanish word mark ENIT - against a figurative ENIT mark.

Erland Nilson AB applied to register a figurative ENIT mark for antipollution devices for motors and engines, data communications services, and data programming in Classes 7, 38 and 42 of the Nice Classification. A-Invest based its opposition on its earlier Spanish word mark ENIT covering goods for use in the health and sanitary field in Class 5. A-Invest claimed that (i) there was a likelihood of confusion between the marks due to their strong phonetic, graphic and conceptual similarities, and (ii) the goods and services to which they applied were either identical or similar.

The Opposition Division rejected the opposition. It stated that while some of the products covered by the two marks had the similar aim of improving health, the actual goods were dissimilar. The Opposition Division also noted that A-Invest's mark covered medicated products distributed mainly in pharmacies, supermarkets, department stores and gardening shops. In contrast, Erland's mark applied to products available from industrial machinery outlets and services obtained by consultation. In addition, it found that A-Invest's products were intended for the general public whereas Erland's goods and services were for more specialized consumers. Accordingly, the Opposition Division concluded that the distribution channels were also dissimilar.

A finding of likelihood of confusion requires that the goods and services covered by the opposing marks are identical or similar. As this was not the case, the Opposition Division rejected the opposition without having to compare the marks.

Florian Schwab, Boehmert & Boehmert, Munich

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