General Court: PDO status irrelevant to assessment of similarity of goods

European Union

In Enosi Mastichoparagogon Chiou v Office for Harmonisation in the Internal Market (OHIM) (Case T-309/13), the General Court has upheld a decision of the Fourth Board of Appeal of OHIM finding that there was a likelihood of confusion between the mark ELMA and the earlier mark ELMEX.

Enosi Mastichoparagogon Chiou filed an application for international registration designating the European Community for the word sign ELMA for goods in Class 5 of the Nice Classification ("chewing-gums for medical and dental purposes containing Chios mastic, dental mastic and dental materials containing Chios mastic, mouth solution for medical, dental and hygienic purposes containing Chios mastic"). Gaba International Holding GmbH filed a notice of opposition based on the earlier Community word mark ELMEX, covering, among other things, goods in Classes 3, 5, and 21 corresponding, for each of those classes, to the following description:

  • Class 3: "cosmetic products and preparations; products and preparations for buccal and dental care".
  • Class 5: "pharmaceutical and hygienical products and preparations; pharmaceutical products and preparations for buccal and dental care".
  • Class 21: "tooth brushes".

The Opposition Division of OHIM upheld the opposition and the Board of Appeal confirmed that there was a likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of the Community Trademark Regulation (207/2009). 

In the proceedings before the General Court, the applicant relied for the first time on the reputation of the mark applied for and submitted 10 documents for the purpose of proving that reputation. This was not allowed, because the applicant could not alter the terms of the dispute as delimited in the respective claims and allegations it and Gaba had submitted. The same applied in respect of the new evidence.

In respect of the relevant public, the applicant claimed that the consumer of the goods covered by the mark applied for is more prudent and informed than the average consumer, since he/she has a medical problem or wishes to protect his/her teeth and chooses a product with therapeutic properties. The court held, however, that the commercial choices which are made or may be made by the proprietors of the marks at issue are factors which must be distinguished from the rights derived from those marks and may change, since they depend solely on the will of the proprietors of those marks. So long as the list of the goods covered by the marks at issue has not been amended, such factors cannot affect the relevant public to be taken into account when assessing whether there is a likelihood of confusion. In the present case, the goods covered by the mark applied for are intended for all consumers, the great majority of whom display only an average level of attention when purchasing such goods. In fact, the file showed that the goods covered by the mark applied for, while ‘mainly’ sold via specialist shops known as ‘mastihashops’, may also be sold in other shops, such as supermarkets, drugstores or pharmacies, as the applicant itself acknowledged.

As regards the comparison of the goods, the court observed that the similarity between the goods in question must be assessed in relation to the finished goods, namely, chewing gum, dental mastic, dental materials and mouth wash respectively, all of which are intended for medical and dental use and contain Chios mastic, insofar as the applicant’s goods are concerned, and cosmetic products and preparations and products for oral and dental care, insofar as Gaba’s goods are concerned. As regards their intended use, the court noted that, notwithstanding their medicinal properties, the goods covered by the mark applied for contribute, to the same degree as those covered by the earlier mark, to dental and oral hygiene and care. Chios mastic must be considered a basic ingredient of the contested goods, which does not change their intended purpose, use or distribution channels and which, therefore, has no effect on the assessment of the similarity between those goods and those covered by the earlier mark. Moreover, the fact that the chewing gum has protected designation of origin (PDO) status cannot affect the assessment of its similarity to the goods covered by the earlier mark. A PDO merely designates the geographical origin of a product and must therefore be considered irrelevant to the assessment of similarity between the goods in question. In the light of the above considerations, the Board of Appeal correctly found that the different composition of the goods covered by the mark applied for could not alter the fact that they are similar to the goods covered by the earlier mark.

As regards the comparison of the signs, the applicant claimed that the marks at issue differed visually, phonetically and conceptually. In general, the consumer attaches greater importance to the beginnings of words. In the case of relatively short word marks, the central elements are as important as the elements at the beginning and end of the sign. Moreover, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his/her trust in the imperfect picture of them that he/she has kept in mind. In particular, the assessment of visual similarity may take into account, in respect of word marks, their lengths, the letters they contain and the order of those letters. Furthermore, what matters in the assessment of the visual similarity of two word marks is rather the presence, in each of them, of several letters appearing in the same order. In the present case, the mark ELMA has four letters and the mark ELMEX has five. Those marks begin with the same letters, namely ‘e’, ‘l’ and ‘m’, and differ only in terms of their end letters, namely ‘a’ for ELMA and ‘e’ and ‘x’ for ELMEX. They are, therefore, relatively short word signs, the first parts of which are identical, and the difference between the end letters is not sufficient to counterbalance that identity. 

As regards the phonetic comparison, it should be noted that the marks at issue are similar insofar as they have two syllables, ‘el’ and ‘ma’ and ‘el’ and ‘mex’ respectively, and share the same first syllable, ‘el’. Furthermore, the second syllable of each mark starts with the letter ‘m’, which is pronounced in the same way for both marks. The fact that the common syllable, ‘el’, appears at the start of the words increases the phonetic similarity of the signs, while the difference in the endings of the words is not sufficient to outweigh that similarity. 

With regard to the conceptual comparison, the court endorsed the Board of Appeal’s findings that the word ‘elma’ is an unusual female first name and is also the name of four small towns in the United States, and that the word ‘elmex’ is devoid of any meaning. Given that the word ‘elmex’ has no meaning in any of the languages of the European Union, it is not possible to make a conceptual comparison of the signs. The fact that the word ‘elma’ corresponds to the Greek abbreviation ‘EΛMA’, which derives from the Greek expression meaning ‘Greek mastic’, as the applicant submits, could not lead to a different conclusion. That line of argument presupposed that the relevant public not only knows the Greek alphabet but also recognises that abbreviation. Since that alphabet is known outside Greece and Cyprus only by a more erudite category of consumers, most European consumers will not be in a position to establish such a connection. In the light of the above considerations, it was necessary to uphold the Board of Appeal’s conclusion that a conceptual comparison of the marks was not possible.

As regards the overall assessment of the likelihood of confusion, the applicant criticised the Board of Appeal for comparing the goods and signs at issue without considering, among other things, the properties of Chios mastic and its reputation. According to case law, a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and that of the goods or services covered. Accordingly, a low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa. In the present case, the goods at issue are similar insofar as they have the same intended purpose, namely oral and mouth hygiene, use the same distribution channels and target the same consumers. Furthermore, the Board of Appeal was right to conclude that Chios mastic, notwithstanding any medicinal properties it may have, was only one of the ingredients of the goods covered by the mark applied for and that those goods displayed a high degree of similarity to the goods covered by the earlier mark. As regards the signs at issue, the words ‘elma’ and ‘elmex’ displayed an average degree of visual and phonetic similarity, while a conceptual comparison was not possible.

In the light of the above, the court held that the Board of Appeal did not err in law in finding that there was a likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation 207/2009.

Paul Steinhauser, Bloemendaal

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