Prior registration of ILS defeats application for ELS

European Union

In Institut für Lernsysteme GmbH v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance has overturned an OHIM decision refusing Institut's opposition to the registration of the Community trademark ELS. The court held that there was visual and aural similarity between Institut's ILS logo and the applicant's ELS word mark.

ELS Educational Services Inc applied to the OHIM for the registration of the Community trademark ELS. Institut opposed the application on the basis of its prior registration of the ILS logo mark in Germany. The OHIM Opposition Division and Boards of Appeal found in favour of ELS Educational Services and dismissed the opposition, holding that there was no likelihood of confusion between the marks. Institut appealed to the Court of First Instance.

Institut argued that the OHIM had failed to apply correctly the principle that "the closer the goods and services are to one another, the greater must be the distance between the marks so as not to create confusion." It also argued that 'ILS' is the predominant element of its mark and that phonetically the German pronunciation of the ELS mark would be identical to its ILS mark.

The OHIM contended that there:

  • were substantial visual differences between the marks;

  • were phonetic differences in the English pronunciation; and

  • could be no conceptual similarity as the words did not convey any meaning in German.

The court found in favour of Institut, thereby overturning the OHIM's decision to refuse Institut's opposition to the registration of the ELS mark. It reasoned that there was visual similarity between the dominant word elements of the two marks. It also stated that the marks would be pronounced in a similar manner in German. Hence, the court concluded that the OHIM was wrong in finding that there was no likelihood of confusion between the marks. The court also ruled that, in breach of Article 73 of the Community Trademark Regulation, the OHIM had failed to give sufficient reasons for its final decision.

Patricia McGovern, Peter Bolger and Ray Murphy, LK Shields Solicitors, Dublin

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