When a letter combination can create trademark problems – an EU Court decision

The European Court has ruled in case T‑860/19, Alkemie Group sp. z o.o срещу Mann & Schröder GmbH.

This dispute concerns a European trademark application for the following classes:

• _{Class 3: “Cosmetics, cosmetic preparations for skin care, creams for cosmetic use, cosmetic milks, essential oils, lotions, balms, liquids, gels, washing products, shampoos”;}

• _{Class 5: ‘Cosmetic products with therapeutic action: curative balms, curative creams, curative essential oils, curative ointments, curative balms, curative tonics, curative lotions for skin care, curative aerosols, curative hair lotions, curative powders for babies, oils medicinal for infants, healing creams for children, impregnated medicinal wipes for hygiene; hygiene products for medical purposes, antibacterial healing preparations for washing the skin, medicinal skin lotions; healing gels for hygiene of the oral cavity and fluids for rinsing the mouth, medicinal preparations for skin treatment; food accessories; hygienic products’;}
• _{Class 35: ‘Retail services, wholesale services, internet sales and mail order services for the following goods: cosmetics, cosmetic preparations for skin care, cosmetic creams, toilet milks, essential oils, lotions, balms, liquids, gels, washing preparations, shampoos, cosmetic products for therapeutic use, food supplements, hygiene products, clothing, bedding [linen], toys, children’s furniture; advertising and marketing; services relating to the presentation of goods; organization of participation in fairs and exhibitions ”.}

Against this application an opposition was filed by Mann & Schröder GmbH based on early registered trademark for ALKMENE in the following classes:

• _{Class 3: “Cosmetics, cosmetic preparations for skin care, creams for cosmetic use, cosmetic milks, essential oils, lotions, balms, liquids, gels, washing products, shampoos”;}

• _{Class 5: ‘Cosmetic products with therapeutic action: curative balms, curative creams, curative essential oils, curative ointments, curative balms, curative tonics, curative lotions for skin care, curative aerosols, curative hair lotions, curative powders for babies, oils medicinal for infants, healing creams for children, impregnated medicinal wipes for hygiene; hygiene products for medical purposes, antibacterial healing preparations for washing the skin, medicinal skin lotions; healing gels for hygiene of the oral cavity and fluids for rinsing the mouth, medicinal preparations for skin treatment; food accessories; hygienic products’;}
• _{Class 35: ‘Retail services, wholesale services, internet sales and mail order services for the following goods: cosmetics, cosmetic preparations for skin care, cosmetic creams, toilet milks, essential oils, lotions, balms, liquids, gels, washing products, shampoos ”.}

The EUIPO upheld the opposition finding both sign as confusingly similar for the consumers in the EU. The decision was appealed.

According the the applicant both marks were not similar because their first part ALK had been widely used in many other registered trademarks, which in turn meant that this letter combination was not distinctive.

The Court disagreed. The fact that other trademarks cover the same letters combination doesn’t mean that it is not distinctive. Such an assumption has to be proved by particular evidence that to show low distinctive character of the combination in relation the the particular goods and services. This didn’t happen in the case at hand.

The Court pointed out that when word mark is compared with combined one, the word part has a dominant position in most of the cases.

From that perspective, the Court considered that there is a similarity between both marks. This was due to their identical beginnings as well as to their identical length and similarity from visual and phonetic point of view.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB.