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General Court: Zytel and dissimilar goods


In caseT-288/12 EI du Pont de Nemours v OHMI , the General Court had to review the following opposition

Mr Enrique Zueco Ruiz – CTM application

EI du Pont de Nemours (US)

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ZYTEL: CTM and well-known mark in the sense of Article 6 bis of Paris convention

Class 9: ‘Apparatus and instruments for producing, conducting, switching, transforming, accumulating, regulating or controlling electricity, used for renewable energies, and parts and fittings included therein’;

 Class 12: ‘Vehicles and apparatus for locomotion, electric vehicles and apparatus for locomotion, parts and fittings included in this class’;

Class 37: ‘Installation, assembly and maintenance of motor vehicles and electric vehicles, and apparatus and instruments for producing, conducting and switching electricity in motor vehicles’.


Class 1: ‘Synthetic resin plastics in the form of powders and granules’;

Class 17: ‘Plastics in extruded form for use in the manufacture of artificial and synthetic resins, nylon resins and glass fibre reinforced nylon resins’.



Both the OD and BoA rejected the opposition as the goods and services covered by the signs at issue are dissimilar, one of the necessary conditions for the existence of a likelihood of confusion within the meaning of Article 8(1)(b) CTMR. The goods are both aimed at the average consumer and a specialised public, such as companies or professionals working in the field of renewable energies. For example, goods in Classes 9 and 12 include finished products that can be directed at the general public or at a specialised public, and the ‘parts and fittings’ in Classes 9 and 12, as well as the services in Class 37, can be directed at OEMs and intermediaries in the automotive supply chain, such as moulders and component manufacturers.

The Court rejected the applicant’s argument that the goods at issue may be complementary in so far as the goods covered by the earlier marks may be used for manufacturing the goods covered by the mark applied for. Goods cannot be regarded as complementary on the ground that one is manufactured with the other.

Further, the manufacturers of the goods at issue are usually different. In addition, the fact that the goods at issue might be directed at the automotive industry is not in itself sufficient to show that they have the same distribution channels. Likewise, it cannot be inferred from the fact that the raw material and the finished products in that material are on the same production line that those products necessarily have the same distribution channels. Furthermore, there is nothing in the file to conclude that the goods at issue tend to have the same distribution channels.

Finally, as for the applicant’s argument that the goods in Classes 1 and 17, which are covered by the earlier marks, are similar to the goods in Classes 9 and 12, which are covered by the mark applied for, since, as a raw material, they may enter into the composition of the finished products, that argument cannot succeed. According to the case-law, the raw materials subject to a transformation process are essentially different from the finished products which incorporate, or are covered by, those raw materials, both by their nature and by their aim and intended purpose.

As regards article 8 (5) CTMR, the Board of Appeal held that the applicant had not explained how the relevant public would be able to establish a mental link between the goods and services bearing the mark applied for and the goods of the earlier marks, to the point of linking a possible reputation of the earlier marks with the goods or services branded under the mark applied for.

The Board of Appeal stated that it did not see why the relevant public would perceive the mark applied for in such a positive way as to be influenced in its purchase of the goods and services covered by that mark and also wondered whether such a positive perception of the mark applied for could result from the good image of the earlier marks. In this respect, even if some of the goods covered by the earlier marks may be used in the manufacturing of environmentally-friendly goods, it is not sufficient to produce the aforementioned mental link or to determine an influenced purchasing behaviour in the relevant public.  

Posted by: Laetitia Lagarde @ 21.15
Tags: general court, likelihood of confusion, zytel, ,
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