THE COMPLEX MARK DOES NOT CREATE A CONFUSION RISK WITH THE WORD MARK DYNAMIN
An application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) was sought for the following figurative sign in relation with the following products:
- Class 5: Dietary supplements for humans and animals, tobacco-free cigarettes for medical purposes, vitamin preparations, medicinal drinks;
- Class 32: Fruit beverages and fruit juices, fruit juice concentrates (non-alcoholic drinks), beer.
The opposition was based on the earlier Spanish word mark DYNAMIN, covering the following goods:
- Class 1: Chemical products and specifics
- Class 5: Dietetic foods adapted for medical use in any shape or form
The opposition division, as well as the Board of Appeal of EUIPO judged that there is no confusion risk between the marks. The owner of the DYNAMIN mark took this case in front of the ECJ (ECJ, 3 may 2016, T-454/15, Laboratorios Ern / EUIPO).
In order to give its ruling, the ECJ relies on a previous judgment, recalling that the assessment of the similarity between two marks cannot be limited to taking into consideration only one component of a complex trade marl and comparing it with another mark.
The overall impression created in the mind of a relevant public by a complex trade mark may, however, in certain circumstances, be dominated by one or more of its components (OHMI/Shaker, 12 june 2007, C-334/05 P, EU :C :2007 :333, paragraph 41).
Unlike what the applicant supported, the Court judged that the term ‘dynamic’ cannot be considered as dominant in the trade mark application, because it dominates nor the word ‘life’, nor the figurative element of bright colors and large. The marks must be therefore considered together.
Thus, the Court confirms the absence of risk of confusion between the marks on the ground that despite the identical nature of certain products, the visual, phonetic and conceptual differences between the signs are sufficient to exclude any risk of confusion. The appeal is thus dismissed in its entirety.
This decision proves, if need be, the importance of the overall assessment of the marks in question as part of an opposition procedure.