OHIM held to have erred in finding that figurative mark was visually similar to earlier word mark
The General Court of the European Union has issued two very different decisions in Cases T-323/12 and T-324/12 (Knauf Insulation Technology v Office for Harmonisation in the Internal Market (OHIM)), which related to two international registrations designating the European Union which shared the element 'ECOSE'.
The different outcomes of these cases result essentially from the presence – or lack thereof – of a figurative element.
Case T-323/12 referred to the word mark ECOSE, while Case T-324/12 referred to the figurative mark ECOSE TECHNOLOGY, pictured below.
The common background of the cases is as follows.
The applicant, Knauf Insulation Technology, sought registration of the marks for a variety of goods and services in Classes 1, 2, 3, 16, 17, 19, 20 and 40 of the Nice Classification, all relating to the field of building and insulation.
Saint Gobain Cristalería SL opposed on the basis of its earlier Spanish trademark ECOSEC FACHADAS, registered in connection with construction-related goods in Classes 17 and 19. The oppositions were upheld in part.
On appeal, the refusal of the marks was confirmed by the Board of Appeal in connection with goods in Classes 2, 17 and 19 with regard to ECOSE TECHNOLOGY, and goods in Classes 17 and 19 with regard to ECOSE.
Knauf requested that the General Court annul the Board of Appeal’s decisions, arguing that OHIM had misapplied Article 8(1)(b) of the Community Trademark Regulation (207/2009) by incorrectly assessing the similarity between the signs and the similarity between the relevant goods. In particular, Knauf argued that OHIM had failed to adequately state the reasons for finding that the goods in question were partly identical and partly similar.
In Case T-324/12 (which concerned the figurative mark), the applicant further submitted that OHIM’s comparison of the signs at issue was flawed to the extent that:
- it had not given adequate importance to the device contained in the mark applied for;
- it had failed to take into account the additional terms 'technology' and 'fachadas' in assessing the aural similarity of the marks; and
- it had not considered how the marks would be understood by the relevant Spanish public.
The General Court confirmed the Board of Appeal’s assessment in connection with the similarity of the goods at issue, also upholding its assessment regarding the level of attention of the relevant public.
As regards the comparison of the signs, the court held that the board's analysis of the aural similarity of the signs was correct, as the Spanish public would concentrate on the distinctive component 'ECOSE'/'ECOSEC', overlooking the descriptive terms 'fachadas' (façades) and 'technology'. The court further agreed with the Board of Appeal that there was no direct conceptual similarity between the signs, as they had no clear meaning in Spanish (except the descriptive components).
However, the court considered that the Board of Appeal had erred in finding that the parties' marks were visually similar. It found that the representation of the mark applied for - including the clover-like device, the colour green and the stylisation of the word elements - was “fairly original and more than simply decorative” and, therefore, the similarity between the word elements 'ECOSE' and 'ECOSEC' was not decisive for the overall visual impression of the marks.
Despite the aural similarity of the marks, the court concluded that the very low degree of visual similarity and the absence of conceptual similarity could only result in a low degree of overall similarity. The fact that the relevant goods were either similar or identical did not offset the low degree of similarity between the marks, therefore excluding a likelihood of confusion - especially as the level of attention of the relevant public (builders and do-it-yourself enthusiasts) would be high. Knauf’s appeal was consequently upheld by the court.
Knauf’s arguments regarding the absence of a likelihood of confusion in Case T-323/12 were mutatis mutandis identical to those it had submitted in connection with its figurative mark. However, the court’s conclusions were not.
In this case, the court upheld the Board of Appeal’s assessment of the similarity of the signs, deriving from the fact that the word mark applied for (ECOSE) was entirely contained in the earlier mark (ECOSEC FACHADAS). The similarity of the signs and the similarity or identity of the goods at issue were sufficient to establish a likelihood of confusion. Knauf’s appeal was thus dismissed, and the refusal of the word mark ECOSE was confirmed.
Celia Sueiras, Garrigues, Madrid
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