OHIM confirms the practice of art. 8(1)(a) – “double identity” in the case ULTRA CHOCO vrs. ULTRA CHOCO
Agroekola EOOD, represented by the team of IP Consulting and owner of registered Community trade mark No 9 221 111 ULTRA CHOCO filed an Opposition against all the goods of Community trade mark application No 9 571 621 ULTRA CHOCO, applied by Wilmar Trading Pte, Ltd. The Opposition was based on the ground of Article 8(1)(a) and (b) CTMR. The contested goods were in class 29, class 30 and class 31.
The three-member commission from the Opposition department of OHIM enacted a decision, accepting the opposition on the ground of Article 8(1)(a) CTMR as the signs were found identical and the contested goods were identical to the goods covered by the earlier trade mark.
The protection pursuant to the above cited article is an absolute one. Where absolutely identical signs are registered for identical goods or services, it is impossible to conceive of circumstances in which all likelihood of confusion could be ruled out.
Article 8(1)(b) CTMR covers the protection of an earlier trade mark against the likelihood of confusion. Hence, this provision assumes that the two comparing trade marks might differ in some elements.
Since the registered trade mark of Agroekola and the contested trade mark were found absolutely identical, there were no need for further examination of the other ground of the opposition, namely Article 8(1)(b) CTMR.
Since the opposition was fully successful on the basis of the ground of Article 8(1)(a) CTMR, the contested mark was rejected and the opposition of IP Consulting was fully upheld.