HYDRO and HYLO are similar enough according to the General Court of the EU

The General Court of the European Union has ruled in case  T‑817/19, Olimp Laboratories sp. z o.o v EUIPO.

This case concerns an attempt by Olimp Laboratories to register the following European trademark in class 05 – Pharmaceutical preparations, Pharmaceutical preparations for the treatment of eye diseases and conditions; Medical preparations; Eye drops, Preparations for ocular lubrication, Medicated eye-washes, Eye lotions for medical use; Topical anti-infective substances for the treatment of infections of the eye; Cachets for pharmaceutical purposes, Capsules for medicines, Lozenges for pharmaceutical purposes, Lozenges for pharmaceutical purposes; Medicines for human purposes, Tonics [medicines], Medicines for medical purposes, Adjuvants for medical purposes, Medicaments in liquid form; Ointments for pharmaceutical purposes, Eye ointment for medical use; Eye pads for medical use, Eye compresses; analgesic and anti-inflammatory preparations; Medicinal herbs.

Against this application an opposition was filed by OmniVision GmbH  based on an earlier European trademark for HYLO-VISION in class 05 – Dietary supplements and dietetic preparations; Medical and veterinary preparations and articles.

Both the EUIPO Opposition division and the Board of Appeal upheld the opposition finding the signs similar enough.

The decision was appealed. Olimp Laboratories argued that the earlier mark is devoid of distinctive character. The element VISION is used by many producers of such products. On the other hand HYLO refers to sodium hyaluronate.

The General Court disagreed and dismissed the appeal.

The Court found the goods as identical. In terms of the signs, the Court considered that the stylistic elements of the mark applied for are purely decorative. The figurative element of an eye and the word HYDRO have low distinctive character. In addition, VISION is descriptive for the goods at hand.

The Court found the claim for relation between HYLO and sodium hyaluronate as not proved and insufficient.

When it comes to the comparison between the marks, the Court considered them visually and phonetically similar. Conceptual similarity was found only in regard to the VISION element but not for the signs as a whole.

The difference between the mark in the letters L and DR was not enough to overcome the similarity.

The EUIPO decision was upheld

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Puma lost a trademark opposition against a cougar

Every trademark owner has the right to file an opposition against new applications for identical or similar marks. This, however, requires a correct analysis and strategy because the final result is not always so clear.

The General Court of the European Union has ruled in case T‑510/19, Puma SE v Gemma Group Srl, which concerns some struggles in that regard.

In the dispute at hand, the following European trademark application was filed for class 7 – Machines for processing of wood; machines for processing aluminum; machines for treatment of PVC:

Against this application an opposition was filed by Puma based on two earlier figurative trademarks for classes 18a 25 and 28:

The EUIPO dismissed the opposition because although these signs had some visual similarities their goods were completely dissimilar.

The decision was appealed several times and was turned to the Board of Appeal of the EUIPO by the European court due to some errors.

The Board confirmed the EUIPO position. It found that notwithstanding their obvious differences, the marks had a certain degree of visual similarity and conveyed the same concept of ‘pouncing feline recalling a puma’. It further found that a phonetic comparison of the marks at issue was not possible and that, visually, those marks were far from being identical. The Board of Appeal stated, in essence, that the applicant had not shown that the relevant, and entirely distinct, sections of the public targeted by the goods covered by each of the marks at issue established a link between those marks even though the goods covered by them were different. Next, it found that the applicant had not shown, in essence, that the positive values associated with the earlier marks could be transferred to the mark applied for. In particular, first, the Board of Appeal found that the applicant had not established the reasons why the image of the sports articles covered by the earlier marks positively influenced consumers in their choice of the goods covered by the mark applied for, which bore no relation to the concepts of sports, competition, active lifestyle, youth, pleasure and leisure conveyed by the earlier marks. The Board of Appeal found, secondly, that the applicant had not shown that the use of that mark for very specific industrial goods could devalue the image of the earlier marks.

The decision was appealed again by Puma but this time the Court dismissed it. Although there were arguments whether the reputation of the earlier marks was stated in time and in the official language of the EUIPO, the Court concluded that Puma failed to prove that the image of the earlier marks could be affected by the use of the mark applied for; the Board of Appeal rightly so decided.

Source: Patent- & Rechtsanwaltskanzlei Meyer-Dulheuer MD Legal Patentanwälte PartG mbB