The General Court (the Court) of the Court of Justice of the European Union ruled in the case T-776/16 (Isocell GmbH v. iCell AB
), dated November 8, 2017, that there is no likelihood of confusion between the earlier word mark ISOCELL and the word part of the younger figurative/word mark “iCell.” for identical and similar goods. The decision, which only became publicly available in May 2018, is noteworthy because it outlines the circumstances under which a graphic arrangement of a mark might eliminate a likelihood of confusion.
iCell AB applied for the registration of the figurative word mark “iCell.” for various goods and services in Classes 17 (e.g., insulating material for various devices and building parts) and 37 (e.g., insulating services). In the mark iCell. the letter “i” was written in white color and placed in the middle of a red rectangle with a speech bubble instead of a point; the word part “Cell” was written next to the graphic “i” in blue color; and finally, there was a square point in green color after the word “Cell”. Isocell GmbH raised an objection against the mark “iCell.” based on its earlier European Union Trade Mark (EUTM) word mark ISOCELL and three International word marks ISOCELL, which were registered for Classes 7, 9, 16, 17, 19, 22, 37, and 41. The Opposition Division upheld the opposition; the First Board of Appeal rejected the opposition.
The Court confirmed the decision of the First Board of Appeal. The Court found that the relevant public consists of specialists and non-specialists who display a high degree of attention. It further affirmed that the goods and services were partially identical and partially similar. As to phonetic similarity, the Court stated that the pronunciation of the two marks was not similar; this would even hold true where the emphasis of the pronunciation was on the letter “i” and the syllable “cell” as pleaded by Isocell GmbH. The Court also denied a conceptual similarity because the parts “iso” and “cell” in the earlier mark could be a suggestive reference to insulating cell and insulating cellulose. On the contrary, the mark “iCell.” could in light of the letters “i” and “cell” be understood as a reference to intelligent cellulose insulating material. The Court further held that the word “cell” had very little distinctiveness, if any at all, for the goods and services in question. The reason for this opinion was the number of trademarks and names of undertakings containing the word “cell” within the insulation production industry. Moreover, the Court stated that if a mark consists of figurative elements as well as words, it does not automatically follow that the word elements must always be regarded as the dominant element.
Taking into account the low level of distinctiveness of the word elements of the marks concerned and the high attention that would be paid by the relevant consumers, the Court concluded that the figurative elements of the EUTM “iCell.” distinguishes the younger mark clearly from the earlier one.