Likelihood of Confusion and Phonetic Comparison between Trademarks
| Autor | María Luján López Dallara |
| Cargo | Abogada ICASAL |
The Opposition Division of EUIPO (OHIM) has examined the application for the opposition of an earlier trademark (Monte Citrus) against the request for registration of a contested mark (Mountain Citrus Spain 1), under the grounds, stated in Article 8.1.B EUCTMR (Likelihood of Confusion). The first application for registration was filed on 5 December 20102, filed a Notice of Opposition3 based on the following reasons:
a.- The goods and services in respect of which registration was sought4 are in headings 29, 31 and 39 of the Classes contained in the Nice Agreement concerning the International Classification of Goods and Services. iv From the point of view of the earlier applicant goods and services were identical.
b.- According to the opponent, comparison of the signs at issue exhibited a high degree of visual similarity and greater than average degree of phonetic similarity between them. Regarding the relevant public and the average Spanish consumer’s perception, a similar idea was conveyed by both signs at hand. Those signs coincided as regards the phonetics of the figurative trademarks. Consequently the voice ‘Monte’and ‘Mountain’ in the first part of both the previous and the contested sign from one part, and the word element ‘Citrus’ from the other the part resulted in a risk of confusion of both trademarks for the relevant public that exclusively understood the idea behind that term. Finally, that led to conceptual similarity for the part of that public to identify the signs in question.
By decision of 26 June 2015 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. Regarding paragraph of the previous section of this essay (Facts of the case), concerning the comparison of the goods and services, those goods covered by the mark applied for and those covered by the earlier mark were identical. Conversely, the services at issue were not equal at all.
Regarding paragraph b.- of the previous section of this article (Facts of the Case: comparison of the signs at hand), the Opposition Division pointed out: on one hand the weak degree of visual similarity and on the other hand the lower than average degree of phonetic similarity between them ('Monte Citrus' vs. 'Mountain Citrus’).
The appellant (as an owner of the earlier brand) was however, less successful before the EU General Court: once the Opposition Division and the Fourth Board of Appeal dismissed their claims, on the basis, that there was no similarity between the two marks at issue on the visual, conceptual and phonetic levels and no likelihood of confusion was appreciated. The General Court of Justice arrived at the same conclusion of no similarity between both signs under Article 8(1)(b) of EU Trademark Regulation (EC) No 207/2009)
After having been applying all the formal and substantive parameters required from article 8.1.b to determine whether or not the earlier trademark could receive protection under the concept of prior right, the opposition division concluded that similarity between the elements of...
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