The Court of Justice of the European Union (ECJ) sways towards the line of the German courts and changes its case law in instances where two conflicting trade marks only coincide in descriptive elements.
The answer to the question of whether two signs are confusingly similar is a science in itself, given the circumstances that may establish similarity between the signs. Are the marks short or long, do they consist of only one or more words or are there other elements, for example, graphic elements? Are the similarities between the signs at the beginning or at the end of the words, how strong is the earlier mark and are they purely made-up words or words from the vocabulary, possibly even that of a foreign language, and if so, upon what linguistic habits of the target public is this to be based?
And as if it were not complicated enough, the rules laid down by the national trade mark authorities and courts of the EU Member States on the one hand and the European courts CFI and ECJ on the other hand are sometimes very different. And this despite the fact that the underlying legal norms are all based on a common European directive. This is not necessarily a pleasant situation for trade mark proprietors and advisors alike.
So far, the German and European courts have taken a rather dissimilar view, for example, in connection with the question of the extent to which smoothly descriptive elements of trade marks play a role in the assessment of a likelihood of confusion. While according to German case law, descriptive elements such as “Bio”, “Food” or “Natur”, play a subordinate role in the examination of the sings’ similarity, since these terms are not protectable when used alone and therefore the other elements of the opposing signs must be given priority, the decisions of the EU trade mark authority EUIPO as well as the EU courts tended to include such descriptive elements in the examination of the similarity of the signs without restriction.
Before you continue reading: What do you think? Can an owner of the earlier trade mark NATURALIUM registered for “hair lotions” successfully oppose the trade mark NATURANOVE registered for “hair care products”? There is no doubt that there is a similarity or identity of the opposing goods here as a prerequisite for the affirmation of a likelihood of confusion. But are the marks themselves so similar that thereby arise a likelihood of confusion among the target public?
If one looks at the previous decision practice of the EUIPO as well as the European courts, this question can only be answered in the affirmative. For example, in the past, a likelihood of confusion was confirmed between CLORALEX and CLOROX (for bleaching agents), despite the very strong reference to the smoothly descriptive term “chlorine”. A likelihood of confusion was also affirmed between the signs CALCIMATT and CALCILAN (for food supplements), although both are recognisably based on the descriptive term “calcium”, and the EU courts also found a likelihood of confusion between NICORONO and NICORETTE (for nicotine chewing gum), although both signs are formed from the descriptive initial syllables of “nicotine” (and the products also refer to it).
This case law is particularly problematic because terms such as “nicotine” or “calcium”, which are not in themselves protectable as trade marks, are nevertheless monopolised for individual trade mark owners in this way. After all, the signs are only registered in the trade mark register on the basis of (minor) deviations of the descriptive base word. Of course, “nicotine” is not registered as a trade mark, but “Nicorette” is. However, if the registered trade mark “Nicorette” is granted such extensive protection that the use of the sign “Nicorono” can also be prohibited, although the similarities lie exclusively in the descriptive element “Nico”, the result is once again a monopoly on “nicotine” for chewing gums containing nicotine.
However, some recent decisions at EU level now give reason to hope that this ultimately very unsatisfactory decision-making practice will be cleared up. According to the previous principles of the EU courts, there would have been no doubt that there was a likelihood of confusion between the two trade marks NATURANOVE on the one hand and NATURALIUM on the other, although the two signs only coincide in the descriptive element “NATURA”. Accordingly, the EU Trademark Office (EUIPO) had also granted the opposition from NATURALIUM. The action brought against this by the proprietor of the NATURANOVE trade mark before the CFI was, unexpectedly, successful.
In its decision, the CFI conceded that, when examining the similarity of opposing signs, the fact that the earlier mark is composed of a strongly descriptive and thus only weakly distinctive element cannot be disregarded. Since the sign elements “NATURA” are weak and the other sign elements “NOVE” and “LIUM” are completely different, the overall similarity of the signs was low, the CFI held, and in ultimately denied a likelihood of confusion.
In summary, the court stated that every trade mark applicant was of course free to apply for registration of a sign which had only a low degree of distinctiveness due to its descriptive elements. However, the trade mark owner must then also accept that other companies are allowed to use signs which also consist of corresponding, similar or identical descriptive elements.
In keeping with this new line, the court denied a likelihood of confusion between the two signs “BIOPLAST” and “BIOPLAK” in another decision. According to former case law, the outcome would probably have been different. And the EUIPO also seems to have taken the new case law to heart. In an opposition decision, the trade mark authority denied a similarity between the word mark “I-RUN” on the one hand and the word and figurative mark “L-RUN” on the other.
When creating a new trade mark, it is tempting to lean on descriptive terms. The advantage is simply that the viewer of the mark immediately forms an understanding of what goods or services are offered under the mark. A certainly well-known example of this is the registered name “Lieferando” for a food delivery service. The other side of the coin, however, is then that third parties may also use trade marks that contain a corresponding smoothly descriptive term, here: “Liefer”, if only they otherwise keep far enough away from the further element “ando”.