General Court considers similarity of goods and services

In Eni SpA v Office for Harmonisation in the Internal Market (OHIM) (Case T-599/11, May 21 2014), the General Court has dismissed an appeal in a case concerning an application for the Community word mark ENI. The action was brought against the decision of the First Board of Appeal of OHIM of September 8 2011 (Case R 2439/2010) in opposition proceedings between Eni SpA and Emi (IP) Ltd.

In 2005 Eni filed a Community trademark (CTM) application for the word mark ENI for goods and services in various classes of the Nice Classification, including Classes 25 and 35. Emi filed an opposition based on its earlier EMI marks, including the figurative CTM reproduced below, registered for various goods and services, including retail services in Class 35:   

Following the opposition, Eni divided its application and restricted the list of goods and services to "clothing, footwear, headgear" in Class 25 and "advertising in the oil, fuel and lubricant, energy production and distribution and transport sectors" in Class 35.

The Opposition Division upheld the opposition in Class 25 based on the figurative CTM shown above and retained only the following service in Class 35: "The bringing together for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase clothing, footwear and headgear". The Opposition Division - and subsequently the Board of Appeal - found that there was a likelihood of confusion due to the similarity of the goods covered by the mark applied for, namely "clothing, footwear and headgear", and the service protected by the earlier figurative CTM, namely retail services in respect of the same goods, and due to the visual and phonetic similarity of the signs at issue. 

Eni brought the matter before the General Court.

Eni claimed, among other things, that there had been an error of assessment in the comparison of the goods and services at issue and referred to the OHIM Guidelines stating that risk of confusion is unlikely between retail services and particular goods, except in very particular circumstances.

The General Court noted that the goods covered by the earlier mark were identical to those to which the relevant retail services related and that such services, which are provided with the aim of selling certain specific goods, would make no sense without the goods. The court stressed that the OHIM Guidelines are merely a set of self-imposed restrictions that must comply with the applicable legal provisions and may not in any way contravene the interpretation which the courts have given a legal rule.

The General Court found that the Board of Appeal had complied with the wording of the guidelines by examining the present case "on its own merits", which had led it to conclude correctly that the goods and the services at issue were similar. The court noted that, although Eni submitted that the mark applied for and the earlier mark were not "well-established in the market" within the meaning of the OHIM Guidelines (the markets being, in the present case, that for items of clothing and that for retail services in respect of clothing), it was sufficient to state that the illustrations provided in the OHIM Guidelines are not exhaustive, as is clearly proved by the use of the words ‘such as’, which precede those illustrations.

Further, the court found that the signs at issue were similar from a visual and phonetic point of view. The court stated that conceptual differences in certain circumstances can counteract the visual and phonetic similarities between the signs. For there to be such a counteraction, however, at least one of the signs at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately. The court did not find that the terms ‘eni’ and ‘emi’ were well known to the general public of the European Union and, therefore, they did not have a conceptual content which could counteract the visual and phonetic similarities between the two marks. 

According to settled case law, a global assessment of the likelihood of confusion implies some interdependence between the similarity of the marks and the similarity of the goods or services. Thus, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.

In view of the visual and phonetic similarities between the signs at issue, and the similarity between the retail services covered by the earlier mark and the goods covered by the mark applied for, the General Court agreed with the Board of Appeal that there was a likelihood of confusion. Therefore, it dismissed Eni's appeal.

This decision is an interesting contribution to the discussion on the possible similarity between goods on the one hand, and retail services relating to the same goods on the other hand. It remains to be seen whether this judgment will lead to an amendment to OHIM’s Guidelines with regard to the issue of similarity of goods and services.

Lisbet Andersen, Bech-Bruun, Copenhagen