EU General Court annuls EUIPO decision in trademark dispute
The EU General Court has annulled a European Union Intellectual Property Office decision that an applied-for mark would not cause confusion with earlier marks owned by a Portuguese food and drink company.
In a decision today, February 7, the EU General Court determined that the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) had failed to compare the marks at issue in their entirety.
Sumol + Compal, the food and drink company, had opposed a mark filed by nutrition expert Ludwig Manfred Jacobs.
In February 2015, Jacobs applied to register the figurative mark ‘Dr. Jacob’s essentials’ in classes 5, 29, 30 and 32 for goods including nutritional supplements, jellies, jams, baked goods, confectionary, beers and mineral water among others. Jacob’s mark is in the colours red, green and orange.
Sumol + Compal filed a notice of opposition to the registration in June 2015 based on four of its earlier marks which also cover goods in classes 5,29 and 32. It’s marks cover goods including fruit pulp, jams, food for babies, beer and mineral water.
The company’s earlier marks are for black and white text which reads ‘FRUTA essential’ (number 970169), a mark which reads ‘compal essencial’ where ‘compal’ is written in the colour orange (number 970169) and a black and white mark which reads ‘compal essencial’ (number 530005).
Sumol + Compal’s fourth mark (number 530007) appears on a jar, with an image of a tree which has the word ‘Compal’ written on it, and ‘essencial’ in bold, white font underneath. This mark uses the colours red, green and orange.
In September 2016, the EU Opposition Division rejected the opposition in its entirety on the ground that there was no likelihood of confusion between the applied-for mark and the earlier marks.
In November, Sumol + Compal appealed against the Opposition Division’s decision, but the Fifth Board of Appeal of the EUIPO upheld it.
In its appeal to the General Court, Sumol + Compal said the EUIPO’s comparison of the marks was not exhaustive, as it failed to take in to account the colour in its earlier marks.
Sumol + Compal said the similarity of the colours between its earlier marks and the applied-for mark contributes to the likelihood of confusion.
In its ruling, the General Court determined that both the EUIPO and the Opposition Division had failed to compare the colour in the earlier marks with the applied-for mark. It said that by failing to consider all of the relevant elements of the earlier marks, in particular the colours, the board of appeal did not compare the marks at issue in their entirety.
It said that the colours of the signs “are constituent elements which must be taken into account”.
The court added that the EUIPO’s assessment that the colours do not influence the phonetic or conceptual comparison of the mark, and that colour is of secondary importance, was “irrelevant”.
The court ordered the EUIPO to pay Sumol + Compal’s costs.
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