No need to assess whether OMEGA3 is descriptive, says CFI

European Union

In Ekabe International SCA v Office of Harmonization for the Internal Market (OHIM) (T-28/05), the Court of First Instance (CFI) has affirmed a decision by the Board of Appeal of OHIM upholding the opposition to the registration of the figurative mark OMEGA3.

Société Cema applied for the registration of the figurative mark OMEGA3 for goods in Class 29 of the Nice Classification (margarine). Puleva SA opposed the registration on the grounds that there was a likelihood of confusion with its previously registered mark PULEVA-OMEGA3 for goods in the same class. The Opposition Division of OHIM upheld the opposition and the Board of Appeal affirmed. In the meantime, Société Cema had transferred the application to Ekabe International SCA. Ekabe appealed to the CFI.

Before the court, Ekabe alleged that the common element between the two mark ('omega 3') is descriptive of only one of the components of the relevant goods - that is, polyunsaturated fatty acids which regulate the production of cholesterol. Ekabe argued that the dominant element of the earlier mark was the term 'puleva' and, consequently, there was no likelihood of confusion with the trademark OMEGA3.

The CFI first confirmed the board's finding that 'omega 3' was the dominant element of the contested trademark, regardless of whether it was descriptive. The figurative element of the mark did not add to the distinctiveness of the mark. The CFI thus refused to consider Ekabe's argument since, if the board's decision were annulled, the opposed trademark would not be eligible for registration on the grounds of lack of distinctiveness under Article 7(1)(b) of the Community Trademark Regulation (40/94/EEC). For this reason, the CFI held that Ekabe did not have a legitimate interest in requesting the cancellation of the board's decision.

Moreover, the CFI held that even if it were established that the term 'omega 3' is not descriptive, the board had correctly concluded that there was a likelihood of confusion between the trademarks based on the fact that the identical element 'omega 3' is dominant in the trademark applied for.

Cristina Bercial-Chaumier, Bureau DA Casalonga-Josse, Alicante and Karina Dimidjian-Lecomte, Casalonga Avocats, Paris

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