In the case mentioned at the beginning, the British company Sanitix applied to the European Union Intellectual Property Office (EUIPO) to register a word trademark with the same name. The mark concerned products from classes 3 and 5, i.e. disinfectants and hygiene products. It would seem that the registration itself would not cause any difficulties, as the matter is clear – the company is registering a trademark with the same name. However, nothing could be further from the truth.
The application for registration quickly triggered a reaction from competitors. The Spanish company AC Marca Brands, which owns earlier trademarks, including the word and figurative mark Sanytol, filed an opposition, arguing that the new mark could mislead consumers, especially in the context of similar products and their origin. As a result, the case was referred to the EUIPO for resolution.
The EUIPO, and subsequently its Board of Appeal, dismissed the opposition, finding that the similarity between the marks was limited to their initial parts, which meant that the likelihood of consumers being misled as to the origin of the goods in question was low. AC Marca Brands, dissatisfied with this decision, brought an action before the Court of Justice of the European Union, seeking the annulment of both EUIPO decisions.
The court analyzed the issues of visual, phonetic, and conceptual similarity between the trademarks in question, finding them to be moderate. Additionally, it pointed out that consumers of the products in dispute, especially those in the disinfectant sector, exhibit a high level of attention when choosing goods. Nevertheless, the court emphasized that when assessing the risk of confusion, the reputation of the earlier trademarks should be taken into account. Consequently, the more recognizable the earlier mark is, especially due to its widespread use, the greater the likelihood that the new mark may mislead consumers as to the origin of the products and services bearing that mark.
In examining the case, the court found that the trademark Sanytol is known in France and Spain, and in the context of disinfectants, it also enjoys a certain reputation throughout the European Union. The distinctive character of the Sanytol marks was reinforced by their previous use, which was of significant importance in assessing the overall case.
As a result, the Court of the European Union, in its judgment of July 3, 2024 (case no. T 358/23), ruled that the decision of the EUIPO Board of Appeal excluding the existence of a likelihood of confusion was incorrect and annulled it.
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