No likelihood of confusion between marks for raw materials and finished products

In EI du Pont de Nemours and Company v Office for Harmonisation in the Internal Market (OHIM) (Case T-288/12, April 9 2014), the General Court has upheld a decision of the Second Board of Appeal of OHIM finding that there was no likelihood of confusion between the figurative mark ZYTEL and earlier ZYTEL marks.

EI du Pont de Nemours filed a notice of opposition against Enrique Zueco Ruiz's application for registration as a Community trademark of the following sign:

This application covered goods and services in Classes 9, 12 and 37 of the Nice Classification. In essence, the goods consisted of apparatus and instruments for producing, conducting, switching, transforming, accumulating, regulating or controlling electricity, vehicles and apparatus for locomotion, electric vehicles and apparatus for locomotion, while the services covered the installation, assembly and maintenance of motor vehicles and electric vehicles and instruments for producing, conducting and switching electricity in motor vehicles.

The earlier marks on which EI du Pont de Nemours based its opposition were:

• the Community word mark ZYTEL; and
• the well-known mark ZYTEL within the meaning of Article 6bis of the Paris Convention.

The earlier marks covered goods in Classes 1 and 17 (ie, synthetic resin plastics in the form of powders and granules and plastics in extruded form for use in the manufacture of artificial and synthetic resins, nylon resins and glass fibre reinforced nylon resins). The parties agreed that the goods covered by the earlier marks consisted of plastic or synthetic products used as a raw material, whereas the goods covered by the mark applied for were finished products.

The opposition was rejected at all instances at OHIM, which considered that the goods and services covered by the mark applied for were different from the services covered by the earlier marks. This difference also meant that there was no risk that the trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character of the repute of the earlier marks.

The General Court approved the test applied by the Board of Appeal. Following a comparison of the respective goods and services, it concluded that they:

• had neither the same intended purpose nor the same method of use;
• did not usually share the same channels of distribution;
• were not produced by the same manufacturers; and
• were not complementary.

The General Court rejected the argument of EI du Pont de Nemours that the goods in Classes 1 and 17 were similar to the goods in Classes 9 and 12 since, as a raw material, they may enter into the composition of the finished products. The court noted that, according to the case law, the raw materials subject to a transformation process are essentially different from the finished products which incorporate, or are covered by, those raw materials, both by their nature and by their aim and intended purpose.

In connection with the ground under Article 8(5) of the Community Trademark Regulation (207/2009), the General Court held that it was unlikely not only that the public targeted by each of the two marks would be confronted with the other mark, but also that a link could be established between the goods and services covered by the mark applied for and the goods covered by the earlier marks. Therefore, it was difficult to accept that a link was established between the signs at issue and that the mark applied for might take unfair advantage of any reputation of the earlier marks.

Paul Steinhauser, Bloemendaal