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15 November 2018Trademarks

EU court rules on health food brand battle

The EU General Court has ruled on a trademark dispute concerning the potential confusion between two marks which share the same first five letters.

In a decision handed down yesterday, November 14, the court dismissed an appeal from Spanish health foods company Foodterapia, which had called for the reversal of a successful opposition to its trademark application.

The court affirmed the European Union Intellectual Property Office’s (EUIPO) Fifth Board of Appeal, finding that the two marks at issue were sufficiently similar.

In July 2014, Barcelona-based Foodterapia applied for an EU trademark for ‘Dietox’, but Italian confectionary company Sperlari subsequently opposed the application, citing its 2012-registered mark ‘Dietor’.

Both the prior-registered mark and the applied-for mark cover classes 5, 29, and 30, for goods including medical infusions, meat and tea.

Although the EUIPO’s Opposition Division initially rejected Sperlari’s opposition in 2016, the decision was later overturned by the EUIPO’s Fifth Board of Appeal.

Foodterapia then took the case to the General Court, claiming that the appeal board’s decision should be annulled.

According to yesterday’s ruling, Foodterapia had not disputed that the trademarks sought protection over identical goods.

The company rather claimed that the sequence of letters spelling out ‘diet’ is very common in the areas covered by the three classes, and although the word ‘diet’ has a weak distinctive character, the sound of the letters ‘x’ and ‘r’ at the end of each mark cause the trademarks to differ substantially.

However, the General Court rejected this argument and affirmed the EUIPO’s decision.

“It must be held that the Board of Appeal’s assessment is free from error. It cannot be denied that the common presence of the first five letters of the word elements that make up the signs at issue, namely the sequence of letters ‘dieto’, positioned in the same order, constitutes a visual similarity,” the judgment said.

The court also concluded that, even if the earlier mark’s distinctive character was low, the similarity between the goods and the two marks are “sufficient to support the conclusion that there is a likelihood of confusion on the part of the relevant public”.

The court ordered Foodterapia to pay the EUIPO’s and Sperlari’s costs.

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