An interesting trade mark case played itself out in Europe recently. The case may not have the same "wow factor" as an Elton John performance or recent news reports of Spacex being able to catch rocket launchers, but it is significant nonetheless. The case involved two names that are instantly recognisable to many people around the world.
The trade mark application
A company called Universal Brand Group Limited
("Universal Brand") applied to register
a trade mark for ELTON in the European Union
("EU") – the application covers a
range of goods and services in classes 9, 11 and 30, with a
specific focus on coffee beans and coffee machines. The trade mark
appears in a slightly stylised form:
The opposition
The application to register ELTON was opposed by a Swedish company called Elon Group AB ("Elon Group"). The opposition was based on a prior EU and Swedish registration for the trade mark ELON – these registrations cover a range of goods and services in classes 9 and 11 covering, inter alia, coffee machines. As far as we know, the Elon Group has no link to Elon Musk.
The European Union Intellectual Office (EUIPO)
The EUIPO found in favour of Elon Group in respect of a number of goods. The office held that there was a likelihood of confusion in terms of Article 8(1)(b) of the EU Trade Mark Regulation ("EUTMR"). The decision of the EUIPO was appealed by Universal Brand.
The Board of Appeal ("BOA")
The BOA dismissed the appeal because it felt that there was a likelihood of confusion. It made the following observations and findings:
Customers with high attention spans
The BOA held that the relevant public to be considered in this case comprised 'average end-consumers and professionals' in Sweden. It went on to say that these customers have an average-to-high level of attention. They are, for example, capable of dealing with varying prices, sophistication, and terms and conditions relating to the goods and services in issue. It pays to have customers who are sharp!
Strong trade mark and inherent distinctiveness
The BOA held that the trade mark ELON has an average level of inherent distinctiveness. That's because it has no meaning in the context of the goods and services.
Visual similarities in the trade marks
The BOA held that the trade marks ELTON and ELON are visually very similar and that there is a likelihood of confusion. It said that the letter 'T' in the middle of ELTON is hardly noticeable.
Phonetic similarities in the trade marks
Universal Brand averred that the trade marks are phonetically distinguishable, and provided a link to a linguistic report by a company called RWS, which describes itself as a global and prominent leader in translation services, language services and intellectual property support solutions. It appears that, other than a link, no further evidence or arguments on the RWS report, or the experts who compiled the report, were provided in the submissions.
The purpose of this report was seemingly to establish that consumers would easily distinguish ELTON and ELON. However, the BOA took no notice of the RWS report and said that a mere link to the website of RWS was not a valid piece of evidence.
There's an important message here for practitioners – don't be lazy when it comes to evidence! The EUIPO and the BOA are not required to examine and retrieve information from links that appear in the written submissions they receive. What these bodies expect is that the practitioners clearly present whatever evidence they think might be relevant!
Conceptual similarities/differences in the trade marks
Universal Brand argued that the trade marks are conceptually different as the public would associate ELTON with a famous singer, Elton John, and ELON with a famous businessman, Elon Musk. Evidence of their repute was submitted which included Wikipedia articles.
The BOA could not avoid the fact that the names Elton and Elon are very well-known and conceptually different, however, the BOA found that:
- A significant part of the Swedish public does not associate ELTON with Elton John or ELON with Elon Musk.
- The two men have no connection to some of the goods covered, for example, coffee machines.
Likelihood of confusion
The BOA held that there was a likelihood of confusion. It pointed to:
- the similarities as regards the goods;
- the significant visual and phonetic similarities between the trade marks; and
- the inherent distinctiveness of the earlier trade mark.
Although there are conceptual differences between the trade marks, these are not enough to avoid confusion. It's important to bear in mind that not everyone associates the trade marks with the individuals!
*Reviewed by Rowan Forster, Executive in ENS' Intellectual Property Department
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
