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Quarterly report on trade mark decisions – Q4 2014

Community trade mark opposition: Aab Co. Ltd (Applicant) v Jorge Perez Jane (Opponent)

The Applicant filed a Community trade mark application for NOVOBE covering “jewellery, cases for jewels, cuff links and cuff link covers, tie clips, ear studs, insignias of precious metal, jewellery chains, watches, imitation jewellery and ornamental jewellery” in class 14.

The Opponent was the proprietor of the following stylised word mark for NOVOBOX (shown below) for “all types of cases, boxes and trays for clocks, watches and timepieces, jewellery and fashion jewellery” in class 14:

Novobox

OHIM found that there was a likelihood of confusion between the two marks but only in relation to the goods in class 14.  It said that the marks were visually and aurally similar as they coincided in their first five letters, namely “NOVOB” (OHIM concluded that the device of two rings, interconnected would be viewed and pronounced as the letter “O” by the relevant public).  Conceptually the marks were viewed to be different as neither mark had any meaning.  As a consequence, OHIM concluded that there was a likelihood of confusion where the goods were identical or highly similar because the first parts of the marks were identical and the consumer generally tends to focus on the first element of a sign.  Therefore the application was rejected for the goods in class 14.

The opposition was therefore successful in part.

UK trade mark opposition:  Peros Limited (Applicant) v Societe des Produits Nestle SA (Opponent)

The Applicant filed a UK trade mark application for RICO for “coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice, sandwiches, prepared meals, pizzas, pies and pasta dishes”.

The Opponent was the proprietor of the logo below containing the text Ricoré for “milk and milk products, beverages made with milk, milk product substitutes in class 29 and coffee and coffee extracts, artificial coffee and artificial coffee extracts, in particular chicory and chicory extracts, mixtures based on coffee and chicory as well as coffee and chicory extracts, beverages made with cocoa and chocolate, edible ices and edible ice preserves, powders and essences for preparing edible ices”.

Ricore

The UKIPO held that there was a likelihood of confusion in relation to coffee, artificial coffee, ices tea and cocoa only as the goods were identical and there was a reasonable degree of visual similarity between the marks. The visual similarity was deemed to carry more weight in the assessment of similarity (as opposed to aural and conceptual) because the goods in question were everyday food items found in supermarkets and would therefore be selected visually by the average consumer, usually in a hurry and without much attention.

Accordingly, the opposition was successful in part.

Community trade mark opposition: Arla Foods (Applicant) v Flensburger Brauerei Emil  Peterson GmbH & Co. KG (Opponent)

The Applicant filed a Community trade mark application for the word mark PØP for “beverages made from milk (class 29) water (beverages), bottled or canned waters, mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices, drinking waters, spring water, bottled or canned waters with flavourings, carbonated drinks, syrups and other preparations for making beverages, drinks containing milk (where milk is not the main ingredient in class 32)”.

The Opponent was the proprietor of the word mark PLOP covering, amongst other things, “beers, mixed beverages containing beer, mineral and aerated waters and other non-alcoholic beverages, fruit beverages and fruit juices, syrups and other preparations for making beverages”.

OHIM found that there was a likelihood of confusion between the marks as “beverages made from milk” were considered to be similar to a high degree to the Opponent’s goods and the rest of the contested goods were identical to the Opponent’s goods.  Regarding the comparison of the marks, OHIM held that the marks were aurally and visually similar saying that the symbol Ø would be seen and pronounced as the letter “O” by the relevant public and therefore the marks coincided in the letters “P”, “O”, “P”, differing in only one letter.

The opposition was therefore successful in relation to all of the contested goods.

Community trade mark opposition: Neatech.it SRL (Applicant) v Grupo Neat S.L. (Opponent)

The Applicant filed an application for the word mark NEATECH for various goods in classes 10 and 12 and services in class 42.

The Opponent was the proprietor of the earlier logo mark shown below containing the text NEAT for goods in class 10 and services in class 42 (amongst others).

neat

OHIM confirmed that there was no likelihood of confusion between the two marks holding that there was no similarity between the two signs notwithstanding the fact that the signs coincided in the letters “N-E-A-T”.  OHIM said that conceptually, the earlier sign would be perceived as meaning “clean, tidy and orderly” whereas with the NEATECH sign, the relevant public would only perceive the element “TECH” as an abbreviation for “technical” or “technology” and would not perceive the word “NEAT” as forming part of the sign.  The opposition was therefore rejected and the application was allowed to proceed for all of the goods and services claimed, notwithstanding the identical and/or similar nature of them.

UK trade mark opposition: Maxicorp Limited (Applicant) v Halewood International Brands Limited (Opponent)

The Applicant filed a UK trade mark application for the word mark, EISENBERG, for “protein based drinks for sports nutrition” in class 5 and “protein based fruit drinks, calorie controlled and calorie reduced beverages, energy drinks, none being derived from grapes or wine, in class 32”.

The Opponent was the proprietor of the earlier mark, EISBERG, for “de-alcoholised wine”  in class 32.

The UKIPO confirmed that there was no likelihood of confusion between the two marks for some of the goods applied for namely protein based drinks in both classes and energy drinks.  There was a likelihood of confusion in relation to the remaining goods including calorie controlled drinks, calorie reduced beverages.

In reaching its decision, the UKIPO compared the two sets of goods and held that protein based drinks were dissimilar in their nature to the Opponent’s goods, would be purchased with sports nutrition in mind, would be presented in different packaging, have different trade channels and would not be in competition with de-alcoholised wines and would not be complimentary to them.

It held, however, that because the marks were highly visually and aurally similar (differing only in the letters “EN” in the middle of the contested sign) that a likelihood of confusion would occur where there was more of an overlap between the two sets of goods.

Calorie controlled and calorie reduced beverages, said the UKIPO, cover a large number of products which could include calorie reduced de-alcoholised wines. The UKIPO therefore held that these goods were identical and would lead to a likelihood of confusion. Rather than refusing the application for these goods, however, the UKIPO invited the Applicant to amend its trade mark specification to replace the broad term “calorie controlled and calorie reduced beverages” with specific goods that fall within the ambit of the broader term, but bear no similarity to de-alcoholised wines.

The opposition was therefore successful in part.