Date: 24 May 2019
Two recent General Court decisions illustrate the importance of ensuring that the specification of goods is specific, i.e. not vague or overly broad. Both opposition proceedings were based on Article 8(1)(b) of the EU Trade Mark Regulation (EUTMR), which states that a trade mark application should be refused if it is identical or similar to an earlier mark, the goods or services covered by the marks at issue are identical or similar, and there exists a likelihood of confusion by the public.
In the first case, Wilhelm Sihn jr. GmbH & Co. KG (WISI) v In-edit S.à.r.l (T-472/17), the General Court upheld the Board of Appeal’s decision that there was no likelihood of confusion between the marks at issue.
In-edit applied to register the figurative EUTM shown below for a variety of goods and services in Classes 9 and 42.
This EUTM application was opposed by WISI on the basis of inter alia their earlier international trade mark designating the European Union for the word CHAMELEON, registered for goods in Class 9.
Both the Opposition Division and the Board of Appeal found that the signs under comparison were similar but the goods were partly similar and partly dissimilar. The EUTM application was rejected for the following goods in Class 9 found to be similar to those of the earlier trade mark: “Computer software, software packages; and computer software programs; magnetic, optical or digital data carriers”. The Opposition Division and the Board of Appeal found no likelihood of confusion existed with respect to the rest of the goods in Class 9 and the services in Class 42.
WISI appealed to the General Court. However, the Court confirmed that there was no likelihood of confusion between the “computer software packages and computer software for configuring technical and commercial data; software packages for computer-assisted production and/or sales” in Class 9 covered by In-edit’s Camele’on figurative sign and the “head ends for cable networks, namely apparatus for receiving, processing, converting, amplifying and transmitting signals; parts of the aforesaid goods; accessories or fittings for the aforesaid goods, as far as included in this class” in Class 9 covered by WISI’s earlier mark. The fact that the goods in Class 9 covered by WISI’s earlier mark might be fine-tuned by software was not sufficient to conclude that those goods were similar to the Class 9 goods at issue covered by In-edit’s Camele’on figurative sign.
In addition, the Court noted that such software did not fall under the terms “parts” or “accessories or fittings” which were vaguely defined terms. According to the Court (at paragraph 29), “…if [WISI] wanted to ensure that the earlier marks were also registered for configuration and operating software for head ends for cable networks, it should have made it clear when it applied to register its trade marks. It should not gain from the vague wording of the goods covered by its mark”.
Contrary to WISI’s submission, the Board was not therefore required to consider that the earlier marks were registered for configuration and operating software for the “head ends for cable networks”. WISI also claimed that head ends for cable networks were intended for receiving, processing, converting, amplifying and transmitting signals over network systems. Those signals were used for digital communication and merely contained data. Accordingly, head ends for cable networks were themselves computers and computer systems. Thus, given that the services of “research and technical studies relating to the installation of computers and computer systems; research, technical studies, consultancy and technical advice relating to the setting up of computers and computer systems” in Class 42, covered by In-edit’s Camele’on figurative sign, were directly linked to computers and computer systems, those services were complementary to head ends for cable networks which were themselves computers and computer systems.
This argument did not convince the Court, which noted that the “head ends for cable networks” covered by WISI’s mark were described exhaustively by means of the term “namely” as being “apparatus”. They were therefore not “systems”. WISI could not maintain that the “head ends for cable networks” covered by the earlier mark were comparable to the computer systems in Class 42 covered by In-edit’s Camele’on figurative sign. The Court remarked that “The fact that the apparatus covered by the earlier marks performs certain functions also carried out by computers is not sufficient to treat such apparatus like computers, the latter having much more complex and varied uses than the apparatus covered by the earlier marks”. The Court concluded that the Board had been correct to find that the services covered by In-edit’s Camele’on figurative sign and the goods covered by WISI’s earlier mark were dissimilar.
This decision illustrates that it’s important when applying for a trade mark to ensure that the wording of the specification provides specific coverage of the desired products or services – as WISI found out, you can’t depend on a vague description of the goods covered by a mark to extend the scope of protection granted under a registration.
Contrast that decision with the outcome of the opposition between Christos Ntolas and General Nutrition Investment (T-712/17), in which the General Court upheld the Board of Appeal’s decision that there was a likelihood of confusion between the marks at issue.
The problem here was that the specification of goods in Class 5 covered by General Nutrition Investment’s earlier EU word mark GNC – namely “protein for human consumption” – was so broad that it meant that the goods were identical to those covered by the word mark “GN Laboratories” applied for by Christos Ntolas. The Court confirmed the Opposition Division and Board of Appeal’s finding that goods covered by the mark applied for in Class 5 could contain protein for human consumption and so were identical to the specification of the goods in Class 5 covered by the earlier mark. Also, the protein content of the goods in Class 29 — with the exception of the edible oils — covered by the mark applied for meant that those goods were similar to the protein for human consumption covered by the earlier mark.
The Court endorsed the Board’s view that, as edible oils could be used interchangeably with butter, they were similar to the “milk products” covered by the earlier mark. Finally, the Court confirmed the Board’s finding that dietary foods, covered by the earlier mark in Class 30, were intended for the same consumers as the protein for human consumption and had the same distribution channels as that protein and, therefore, had to be classified as similar.
Given the moderate similarity between the marks at issue and the partial similarity and partial identity of the goods covered by them, the Court therefore confirmed the Board’s finding of likelihood of confusion.