EU General Court overrules EUIPO’s water heating decision
The EU General Court has backed a Sweden-based design company in a trademark appeal against the European Union Intellectual Property Office (EUIPO).
In January 2014, Uponor Innovation applied for an EU trademark (EUTM) at the EUIPO for the word sign ‘Smatrix’, citing goods and services in classes 9, 11 and 37, mainly covering internal water heating systems.
Five months later, in June 2014, Sweden-based heating and cooling company Swep International opposed the trademark application. The opposition was based on its earlier figurative EUTM for ‘AsyMatrix’, covering services in class 11.
In December 2015, the Opposition Division partially upheld the opposition with regard to goods in classes 11 and 37 in the applied-for mark, but it dismissed the opposition in respect of class 9.
Uponor filed an appeal at the EUIPO in February 2016 against the decision.
Swep International sought dismissal of Uponor’s appeal and a cross-appeal against the decision to reject the opposition regarding class 9.
In March 2017, the Second Board of Appeal of the EUIPO rejected Uponor’s appeal and upheld Swep International’s cross-appeal.
The Board of Appeal said that the relevant public consisted of professionals and of the general public who would show a high level of attention.
In addition, the Board of Appeal concluded that the signs were visually, phonetically and conceptually similar for a significant part of the relevant public.
Uponor argued before the General Court that the goods and services covered in the classes are similar to a low degree and that the marks at issue differ visually and have a low degree of phonetic similarity.
The General Court confirmed the Board of Appeal’s finding that the relevant public will display a high level of attention and that it was correct in finding that the services covered by the marks were similar.
However, the General Court supported Uponor’s argument that the marks are conceptually different.
According to Unopor, the earlier mark is an amended version of the word ‘asymmetric’, which refers to the asymmetric design of goods marketed by Swep International. Therefore, the relevant public will “undoubtedly” associate the earlier mark with the word ‘asymmetric’.
The Board of Appeal had argued that Unopor did not provide any evidence to support this claim.
Unopor said that it did provide relevant evidence, and the General Court said: “In that regard, it referred to a document from the intervener’s [Swep International’s] website, describing the product in question.”
The General Court said that the Board of Appeal was obliged to take into account this evidence. Therefore, it incorrectly held that Unopor had not adduced any evidence supporting its assertion.
“That error entails the failure of the Board of Appeal to examine a potentially relevant factor in the overall assessment of the likelihood of confusion between the mark applied for and the earlier mark,” said the General Court.
The decision of the Board of Appeal was therefore annulled. The EUIPO must bear its own costs and those incurred by Uponor before the General Court. Swep International was told to bear its own costs and those incurred by Uponor before the Board of Appeal of the EUIPO.
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