A foreign company, represented by the team of IP Consulting, filed an Opposition against all the goods of European trademark application, namely against all the goods in Class 5. The opposition is based on European trademark registration for a figurative mark. The opponent invoked Article 8(1)(a) and (b) EUTMR.
The goods on which the Opposition is based are in identical classes. Furthermore, they are connected to health and well-being which predisposes to more careful shopping and a wider range of consumers. The relevant territory is the European Union.
The contested mark and the earlier registered mark consist of the same word. It is written in blue with the letter D written in red. The difference occurring in the contested trade mark is the Arabic writing under the word part of the sign. The earlier mark consists of the word “EDMARK” again, but it has the symbol for registered mark – ®. Nevertheless the dominant element of both marks – “EDMARK” is undoubtedly eye-catching and it stands out over the overall impression. Therefore, the marks are visually, aurally and conceptually high similar.
Taking these facts into account, the distinctiveness and likelihood of confusion in a global overall have to be assessed.
A likelihood of confusion exists, if there is a risk the consumers to believe that the goods or services in question, come from the same undertaking or from economically linked undertakings, because of their similarity of goods and services and because of the trademark distinctiveness at all.
Therefore, the opposition is upheld and the contested trade marк is rejected in its entirety. According to Article 109 (1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
