Trademark containing earlier mark and descriptive element refused registration

European Union

In Infocit - Prestação De Serviços, Comércio E Indústria Lda v Office for Harmonisation in the Internal Market (OHIM) (Case T-85/14), the General Court has confirmed a decision of the Second Board of Appeal of OHIM finding that there was a likelihood of confusion between the trademark DINKOOL and the earlier trademark and trade name DIN.

In February 2011 Infocit applied to register the word mark DINKOOL as a Community trademark (CTM) for goods in Classes 7, 9 and 11 of the Nice Classification (including cooling apparatus and water coolers). In May 2011 German company DIN - Deutsches Institut für Normung eV lodged an opposition against this application based on:

  1. the earlier figurative international trademark DIN (Registration No 229 048), which protected goods and services in Classes 1 to 34 and covered Germany, among other countries:
  2. the earlier non-registered sign DIN.

In support of the opposition, DIN referred to the grounds laid down in Article 8(1)(b), (4) and (5) of the Community Trademark Regulation (207/2009).

The Opposition Division of OHIM rejected the opposition in its entirety, finding that there was no likelihood of confusion, even though the goods were partially identical and partially similar. The Opposition Division found that DIN had failed to demonstrate the reputation of the earlier trademark and trade name.

The Second Board of Appeal of OHIM upheld DIN's appeal, annulled the opposition decision and refused the application in its entirety, stating as follows:

  • The trademarks DIN and DINKOOL were aurally and visually similar, and the slight dissimilarities relating to the additional element 'kool' in the contested trademark did not outweigh the similarities. As the partial identity of the goods and services was not in dispute, there was a likelihood of confusion for part of the goods (Article 8(1) b of the regulation).
  • With regard to the contested goods that were not similar to those covered by the earlier trademark, the opposition was well-founded based on Article 8(4) of the regulation, as the trademark DINKOOL would take unfair advantage of the earlier trade name DIN, which had a reputation in Germany. In order to find that the sign had a reputation, the Board of Appeal took into account additional documents submitted by DIN during the appeal proceedings.

The General Court confirmed the decision of the Board of Appeal. In particular, the court stressed that the fact that a sign (DINKOOL) is composed exclusively of an earlier trademark (DIN), to which another word ('kool') has been added, is at least an indication that the two marks are similar. The fact that the relevant German public would understand the additional word 'kool' as 'cool', which is descriptive at least for part of the goods, only reinforced this finding. Further, the court reiterated that the risk that the public might believe that the relevant goods or services come from the same undertaking, or at least from economically-linked entities, constituted a likelihood of confusion.

As regards the formalities of the proceedings, the court pointed out that the plea of non-use, which was raised on behalf of Infocit only during the court proceedings, was submitted belatedly and, therefore, could not be considered.

This decision once again shows that CTM applicants must raise a plea of non-use during the opposition proceedings before OHIM, and that they must be cautious when their applications consist of an earlier trademark with the addition of only one other element.

Nevertheless, it would have been interesting to see whether the court would have come to a similar conclusion if the earlier trademark had not been placed at the start of the contested trademark, or if the additional element had not been descriptive, or at least had had very weak distinctiveness.

Tanja Hogh Holub, Beiten Burkhardt Rechtsanwaltsgesellschaft mbH, Munich

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