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11 November 2021TrademarksAlex Baldwin

Nissan loses challenge to ‘E-Power’ mark

The EU General Court has dismissed an appeal from Nissan challenging the registration of a word sign from Netherland’s manufacturing company VDL Groep.

The court held that, while the word sign “VDL E-POWER” is “visually, phonetically and conceptually” similar to Nissan’s pre-existing “E-Power” trademarks, the inclusion of “VDL” in the sign made the two marks distinct.

The court also found that the common phrase between Nissan and VDL’s marks, “E-Power”, had a “low degree of distinctiveness”.

As a result, the General Court ruled that there was no likelihood of confusion between VDL’s word sign and Nissan’s prior marks, dismissing Nissan’s action and ordering the car giant to bear its own costs.

The judgment was handed down on Wednesday, November 10.

Board’s analysis

While broadly agreeing with a prior decision from the European Union Intellectual Property Office’s (EUIPO) Board of Appeal that there was no likelihood of confusion between Nissan and VDL’s marks, the General Court claimed that the board erred in not defining the degree of “conceptual similarity” between the conflicting signs as “low”.

The judgment said: “As for the element ‘VDL’ of the mark applied for, whether perceived by the relevant public as a reference to the intervener’s company name or devoid of all meaning, that element is not present in the earlier marks.

“On account of the higher degree of distinctiveness of that element than of the element ‘E-Power’, it must be found that the conflicting signs, taken as a whole, have, at most, a low degree of conceptual similarity.”

Case background

VDL filed to register the word sign in May 2018 under Classes 7,9 and 12 of the Nice Agreement, which generally covers engines, motors, and electric vehicles.

Nissan filed a notice of opposition to the registration based on two of its earlier trademarks in classes 9 and 12 for “E-Power”.

The EUIPO upheld Nissan’s opposition based on the “E-Power” mark and refused VDL’s word sign registration.

VDL appealed the opposition division’s decision to the board of appeal at the EUIPO, which annulled the verdict, claiming that the inclusion of “VDL” in the mark applied for differentiated the conflicting signs, meaning there was no likelihood of confusion. The board of appeal agreed.

Nissan then appealed this decision to the EU General Court, holding again that there was a likelihood of confusion between the marks and the word sign.

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