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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.

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SUNDAY, 11 DECEMBER 2016
General Court decides on likelihood of confusion between DOLOKORN and DOLOPUR

In Case T-769/15, the General Court had to decide whether there was a likelihood of confusion between the following word marks:

Contested Application:

Earlier EUTM:

Dolokorn

Dolopur

Class 1:

"Manures; Fertilisers for soil; Inorganic fertilisers; Manures for the soil; Fertilizers; Manures and fertilisers; Rigid manures; Garden feeds and fertilisers; Mixtures of fertilisers; Fertilising lime; Fertilizers for domestic use; Mineral fertilizers."

Class 1:

"Dolomite for industrial purposes; calcium carbonate powder; calcium carbonate granules; calcium carbide; calcium salts; carbonate; magnesium carbonate; percarbonate; chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; tanning substances; adhesives used in industry."

EUIPO's Opposition Division and First Board of Appeal (BoA) upheld the opposition due to the identity of the goods at issue and the similarity of the conflicting signs.

While the Applicant conceded that the goods under comparison were identical, it claimed before the General Court that the signs were not sufficiently similar to give rise to a likelihood of confusion. According to the Applicant, the relevant public would perceive the prefix "Dolo" as a reference to dolomite, which was the raw material of the goods at issue. Because of the resulting low distinctive character of the coinciding element "Dolo", argued the Applicant, the relevant public would focus its attention on the suffixes "korn" and "pur", which were clearly distinguishable. Consequently, the conflicting signs were not likely to be confused, in the Applicant's view.

Unfortunately for the Applicant, the General Court was not convinced by this line of argument. Accepting the approach taken by the BoA, the Court confirmed a likelihood of confusion for two hypothetical scenarios:

In the first scenario, the relevant public was held not to perceive any reference to the raw material dolomite within the conflicting signs. Assuming that the prefix "Dolo" would be understood as a fanciful component, the Court concluded that the signs were sufficiently similar to give rise to a likelihood of confusion.

The second scenario presumed for the sake of argument that the Applicant's claim was true, namely that consumers would understand "Dolo" as referring to the raw material dolomite. Nonetheless, there was no likelihood of confusion in this scenario either. According to the Court, the level of distinctive character of the suffixes "korn" and "pur" had to be considered as low as the one of the prefix "Dolo". The relevant public would understand the element "korn" (German for the English term "grain") as a reference to the granular structure of the products, while the element "pur" (German for the English term "pure") would be understood as an indication of the products' purity. The Court held that, as a consequence, the relevant public would focus its attention equally on the prefixes and the suffixes of the marks at issue. Under these circumstances, the average consumer would expect the goods under comparison to stem from the same undertaking. The Court confirmed, as a result, the BoA'a decision upholding the opposition.

Since this Blogger does not typically consider himself part of the relevant public for the goods at issue (i.e., fertilisers), he conducted a brief online search on "dolomite", which is both the name of a mineral and the sedimentary carbonate rock (for more information, click here). Interestingly, the Applicant's homepage states that Dolokorn consists of crushed and then granulated dolomite. The proprietor of the earlier EUTM uses the term dolomite (German: "Dolomit") not only in the specification of its goods but also within the tagline of the product DOLOPUR, as can be seen on the right. Additional product names that showed up on third party websites were "DOLOMIX" and "ECODOLO". These findings would suggest that the raw material dolomite does play an important role in the relevant field of business and that consumers may very well understand "Dolo" as a reference to dolomite.

While the Court's decision is arguably in line with the current EUIPO Guidelines on the criteria for the global assessment (see here), the result may appear unsatisfactory to some readers. On the one hand, it is true that the conflicting signs follow the same structure and share an identical beginning. On the other hand, it seems paradoxical that an undertaking should be entitled to monopolise a weakly distinctive element (i.e., "Dolo") by juxtaposing it with another element of weak distinctive character. Some may contend that a restrictive scope of protection of the resulting juxtaposed mark should be the proper downside for choosing a highly allusive trade mark in the first place.

Posted by: Christian Tenkhoff @ 12.24
Tags: likelihood of confusion; low distinctiveness; similarity of signs,
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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.


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