European TM rulings: SOS TM is refused, General Court rebukes EUIPO
WIPR looks at trademark rulings released this week by the European General Court, and the key takeaways from each ruling.
Sumol + Compal Marcas v EUIPO - Jacob (Dr. Jacob's essentials)
In February 2015, Ludwig Manfred Jacob applied to trademark ‘Dr Jacob’s essentials”
for goods in classes including non-alcoholic beverages, food products, dietetic preparations, nutritional supplements and pharmaceutical preparations.
In June 2015, Sumol + Compal Marcas, opposed the application. The European Intellectual Property Office (EUIPO) rejected the opposition in its entirety on the ground that there was no likelihood of confusion between the goods.
In November 2016, the applicant filed a notice of appeal with EUIPO. In July 2017, the Fifth Board of Appeal of EUIPO dismissed the appeal. It held that, despite a low degree of similarity between the signs, the differences between them were sufficient to rule out any likelihood of confusion. The First Board of Appeal at EUIPO later reaffirmed the EUIPO’s decision.
On Wednesday September 9, The EU General Court ruled that on appeal that Sumol had not established that the First Board of Appeal erred in its assessment of the degree of visual similarity between the signs at issue and had not put forward any argument in support of that complaint which has not already been assessed and rejected in the context of the first ground. The court rejected the complaint and ordered Sumol to pay costs.
Daw v EUIPO (SOS Innenfarbe)
In March 2018, Daw applied to trademark the word sign ‘SOS Loch- und Rissfüller’ for
Goods in classes of chemical products, unprocessed natural resin and mortars, which was refused by the EUIPO. An EUIPO board of appeal affirmed this decision.
On appeal, Daw argued that the board was wrong to consider that the acronym “SOS” was generally used in all types of distress situation, including in situations which do not threaten the physical integrity of persons. Furthermore, it argued that the board did not take into account the fact that the products for which registration was requested do not correspond to categories of products typically used in emergency situations.
The General Court, however, held that term does not apply only to situations threatening the physical integrity of the persons concerned and that the board was also right to hold, without being contradicted by the applicant on this point, that it was a question of a generic term for plasters or fillers for repairing holes and cracks.
It added that the board rightly found, on the basis of a full examination and taking account of the perception of the relevant public, that the mark requested met the ground for refusal. Daw was ordered to pay costs.
Gothe and Kunz v EUIPO - Aldi Einkauf (FAIR ZONE)
In July 2017, Oliver Gothe and Mr. Martin Kunz applied to trademark word mark ‘FAIR ZONE’ for goods in classes of household gloves, gardening gloves, footwear and fitness bands.
In October 2017, Aldikauf filed an objection against the registration of the trademark applied for, which the EUIPO upheld, holding that it was too similar to its own trademark ‘Fair’, which covers similar goods and could lead to consumer confusion.
The Fourth Board of Appeal of the EUIPO, however partially upheld the appeal by Kunz and Gothe holding that the “goods covered by the mark applied for were not similar to the goods covered by the earlier mark, therefore so that no likelihood of confusion between the marks at issue could exist with regard to them”.
On appeal, the General Court disagreed with the board of appeal’s ruling finding “that its analysis is open to criticism in several respects”, and ordered Gothe and Kunz to pay costs.
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