July 1, 2014
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EUROPEAN UNION: General Court Assumes Danger of Confusion Despite Limited Distinctiveness
The General Court of the European Union recently had to decide an opposition case where the opposing mark could be considered to have only limited distinctiveness in some member states of the EU.
In 2010, Mäurer & Wirtz GmbH & Co. KG filed a Community trade mark (CTM) application for 4711 AQUA MIRABILIS, to cover various goods in Class 3, including “perfumery.” The application was opposed by Sacra Srl, based on its CTM registration for AQUA ADMIRABILIS. The opposition was based on “perfumery and fragrances,” also in Class 3. The Opposition Division of OHIM assumed likelihood of confusion and rejected the opposed application. The applicant first filed an appeal, and, after rejection of the appeal, brought a lawsuit before the General Court.
The applicant claimed that the opposing mark AQUA ADMIRABILIS was descriptive or at least of limited distinctiveness in those member states of the EU where the meaning of “aqua” and “admirabilis” as “water” and “wonder” or “wonderful” would be understood by the relevant consumers. As a consequence, the applicant claimed that the scope of protection of this mark had to be limited in the whole territory of the European Union owing to the unitary character of a CTM. If likelihood of confusion was assumed for the whole territory of the European Union, the scope of protection of the opposing mark was unduly broadened.
The General Court, however, confirmed the decision of the Appeal Division. The distinctiveness of the opposing mark was one factor to be considered in the assessment of likelihood of confusion. However, it was only one factor besides similarity of goods and similarity of signs. Therefore, even if the distinctive character of the opposing trademark was low, likelihood of confusion could still exist in cases where similarity of goods and similarity of signs were sufficient. (Mäurer & Wirtz GmbH & Co. KG v. OHIM, Case T-25/13 (GC Feb. 27, 2014).)
This case highlights one of the difficulties the CTM system faces. While one trademark may be perceived differently in the various member states, a CTM has unitary character and, according to the Community Trade Mark Regulation (Council Regulation (EC) No. 207/2009), has equal effect throughout the Community.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
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