Prior ELCO registration leads to partial cancellation

The Cancellation Division of the Office for Harmonization in the Internal Market has upheld a partial invalidity action against a Community trademark registration for ELCO (Case 1238, March 19 2007).

Greek company ELCO VAGIONIS AE filed a partial invalidity action against the Community trademark ELCO with regard to goods in Class 11 of the Nice Classification on the basis of its prior national trademark ELCO registered in Greece in 1957 and used continuously and extensively since then in the Greek market.

The Community trademark holder, Hungarian company Merloni Brands Kft, argued, among other things, that the specification of goods in Class 11 of the Nice Classification covered by the prior Greek national registration for ELCO, namely "household electrical appliances and electrical kitchen utensils", was not precise enough and, as a result, ELCO VAGIONIS had failed to prove confusion. In addition, it alleged that the two marks had coexisted in Greece for 10 years.

These arguments were dismissed ab initio by the Cancellation Division due to a lack of substantive evidence submitted in support thereof.

The Cancellation Division next discussed the issue of 'genuine use' as a pre-requisite for establishing whether ELCO VAGIONIS has a legitimate interest in the ELCO mark. Citing the Ansul Case, it reiterated the strict threshold for establishing genuine use by applying the principle that token use is not sufficient per se for qualifying as genuine use. Rather, genuine use is use that goes to the heart of the essential function of a trademark, which is to guarantee consistently the identity of the origin of the goods or services covered.

Based on the facts before it and the evidence submitted by ELCO VAGIONIS in the form of, among other things, advertisements and invoices, the Cancellation Division was satisfied that ELCO VAGIONIS's use of the mark ELCO in Greece was genuine within the legally required timeframes and given the volume of sales of products bearing the ELCO mark in Greece. Although the evidence of use submitted was for the Greek market only, the Cancellation Division underlined the principle that use in a single EU member state is sufficient for the purposes of establishing genuine use. Moreover, the Cancellation Division determined that the minor difference in the form in which ELCO VAGIONIS used its mark from the form of registration did not affect the distinctive character of the trademark.

When comparing the ELCO Community trademark with the prior registered Greek mark, the Cancellation Division held that the marks virtually coincide as the minor graphic elements in the Greek mark were deemed to be "commonplace and unimaginative" and as such did not suffice to differentiate the two marks.

The Cancellation Division determined that the general specification of goods covered by the earlier Greek mark encompassed and in effect overlapped with the very detailed specification of goods in Class 11 set out in the ELCO Community trademark registration: "heating, ventilating and water heating apparatus and various parts and fittings for these goods". Thus, both sets of goods had the same purpose, target group of consumers and place of distribution, which created a risk of confusion. Accordingly, the Cancellation Division cancelled the ELCO Community trademark in respect of goods in Class 11.

Eleni Lappa, Dr Helen G Papaconstantinou John V Filias & Associates, Athens