ERGAS and ERDGAS held to be confusingly similar

The Estonian Board of Appeal has upheld the opposition filed by E.ON Ruhrgas Aktiengesellschaft against the application for the registration of the trademark ERGAS by Estonian company AS Reola Gaas for goods in Class 4 of the Nice Classification on the grounds that it was confusingly similar to its earlier registered trademark ERDGAS (and design) (Case 943-o, May 28 2008).
Reola applied to register the word mark ERGAS (Estonian for ‘alert’ or ‘lively’) for gas and fuel in Class 4. The Estonian Patent Office allowed the application.
German company E.ON, one of the leading gas companies in Europe, opposed the application based on its earlier trademark ERDGAS (German for ‘natural gas’) for fuel (in particular, natural gas), which is registered in several countries.
E.ON stated that the trademarks ERGAS and ERDGAS were almost identical from a visual and phonetic point of view. E.ON contended that the application should thus be rejected under Article 10(1)(2) of the Estonian Trademark Act on the grounds that the marks were confusingly similar. E.ON also claimed that the coexistence of the trademarks in question would:
  • confuse consumers as to the origin of the goods; and
  • depreciate the commercial value of its registered trademark. 
Reola argued that there was no likelihood of confusion, since the words ‘ergas’ and ‘erdgas’ both have a certain meaning. Reola also pointed out that the pronunciation of the words was different: ‘ergas’ is pronounced ‘ergas’ in Estonian, while ‘erdgas’ is pronounced ‘erdkas’ in Estonian and ‘ertgas’ in German.
The Board of Appeal reversed the decision of the Patent Office on the grounds that the marks were confusingly similar. The board focused its analysis on the visual and phonetic similarities between the marks, holding that the different meaning of the words ‘ergas’ and ‘erdgas’ played only a secondary role in the assessment of confusion.
Kärt Laigu, Käosaar & Co, Tallinn

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