Protection of trademarks can hide some traps especially when companies want to use not so distinctive signs. Although in some cases such signs can be registered (for example in combination with fonts, graphics, etc.) this doesn’t mean automatically that the relevant trademark protection is completely solid.
A good example of this is a lawsuit Case T-755/20 lost by Nissan before the General Court of the European Union.
The case concerns an application for a European trademark filed by VDL Groep for VDL E-POWER in classes 7, 9, and 12, including “batteries for vehicles; charging stations for electric vehicles; vehicles; and electric vehicles”.
Against this application, an opposition was filed by the automobile manufacturer Nissan based on the following figurative British and French trademark in classes 9 and 12 goods, such as “batteries for land vehicles and electric vehicles and their parts and fittings”:
Initially, the EUIPO upheld it entirely, however, after that the Board of Appeal overturned the decision finding both signs dissimilar.
The General Court upheld the Board’s position.
In the case at hand, the relevant consumers put more attention when dealing with the goods from the above classes.
E-POWER is a term that can be perceived by consumers as referred to vehicles powered by electricity. Due to this fact, the distinctive level of the sign is lower.
At the same time, the first element in the trademark applied for VDL has a normal level of inherent distinctiveness because of which it creates the necessary difference between both signs especially in the light of the higher level of consumer attention.
Nissan’s arguments that VDL coincides with the owner’s company name and due to this is not distinctive enough for the assessment was dismissed by the Court as irrelevant.