Log in

CLASS 46


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

Want to receive Class 46 by email?
Click here subscribe for free.

Who we all are...
Anthonia Ghalamkarizadeh
Birgit Clark
Blog Administrator
Christian Tenkhoff
Fidel Porcuna
Gino Van Roeyen
Markku Tuominen
Niamh Hall
Nikos Prentoulis
Stefan Schröter
Tomasz Rychlicki
Yvonne Onomor
FRIDAY, 5 FEBRUARY 2010
The Transformers take over the General Court: ENERCON confusingly similar to TRANSFORMERS ENERGON

 

In its judgment delivered on February 3, 2010, in case T-472/07, the General Court upheld OHIM’s Opposition Division and Board of Appeal decisions refusing the registration as a CTM of the word ENERCON. The mark was filed in 2003 by Enercon Gmbh, in connection with goods in, inter alia, Classes 16, 18, 24, 25, 28 and 32, but was rejected following an opposition by Hasbro Inc. Hasbro claimed likelihood of confusion with its earlier word CTM “TRANSFORMERS ENERGON” in connection with identical products in the very same classes. The juicy bit of the General Court’s judgment reads:

 28 In the context of consideration of the likelihood of confusion, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (Case C-334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 41).

……………..

32 In this connection, whilst it is true that the ‘transformers’ element is the first part of the sign and is longer than the ‘energon’ element, the word ‘energon’ cannot be regarded as playing only a marginal part in the overall impression produced by the earlier mark. To the contrary, that element plays a significant part in the overall impression produced by the earlier trade mark and consequently cannot be ignored. As the Board of Appeal pointed out in paragraph 19 of the contested decision, both of the elements of which the earlier mark consists are distinctive in character, neither being more dominant or distinctive than the other in the overall impression created by the earlier mark.

………………..

34 Furthermore, the applicant cannot argue that the word ‘transformers’ is the dominant element of the earlier trade mark because of the font and its larger size compared to that of the ‘energon’ element in the way in which that trade mark is used. It must be pointed out that the consideration of the similarity of the trade marks at issue takes into account those marks as a whole, as they are registered or applied for [something we tend to forget all too often]. A word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element. The protection which results from registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that mark (see, to that effect, Case T-211/03 Faber Chimica v OHIM – Nabersa (Faber) [2005] ECR II-1297, paragraphs 33 and 37; judgment of 13 February 2007 in Case T-353/04 Ontex v OHIM – Curon Medical (CURON), not published in the ECR, paragraph 74; and judgment of 22 May 2008 in Case T-254/06 Radio Regenbogen Hörfunk in Baden v OHIM (RadioCom), not published in the ECR, paragraph 43). It is therefore not appropriate to take into account, for the purposes of the consideration of the similarity between the trade marks at issue, the font and size in which the ‘transformers’ element of the earlier word sign may be presented.

With Greek case law in mind, this Class46 member thinks the outcome of the opposition might have been different in the aforementioned southern part of the Union.

Posted by: Nikos Prentoulis @ 12.27
Tags: General Court, T-472/07, enercon, transformers energon, opposition, likelihood of confusion,
Sharing on Social Media? Use the link below...
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA1663
Reader Comments: 0
Post a Comment


MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.


The Class 46 Archive






 

 

 

 

 

 


CONTACT

info@marques.org
+44 (0)116 2747355
+44 (0)116 2747365
POST ADDRESS

Unit Q, Troon Way Business Centre
Humberstone Lane, Leicester
LE4 9HA

EMAIL

Ingrid de Groot
Internal Relations Officer
ingrid.de.groot@marques.org
Alessandra Romeo
External Relations Officer
aromeo@marques.org
James Nurton
Newsletter Editor
editor@marques.org
Robert Harrison
Webmaster
robertharrison@marques.org
BLOGS

Signup for our blogs.
Headlines delivered to your inbox