Arguments gone with the wind: the EGC upholds a decision concerning a potential one-letter “e” mark
In a recent case, the European General Court (EGC) touched upon several hot potatoes: one-letter marks, acquired distinctiveness and the difference between an identical and a similar good and service.
Background of the case
On 16 November 2011, Eolus Vind AB, a Swedish company involved in wind energy industry, applied to register a figurative mark consisting of a stylized letter “e” (EUTM no: 010420941). The registration covered a wide field of goods and services, from electrical energy deriving from wind power, construction and repair of wind power plants and energy distribution, to insurance and legal services.
On 29 February 2012, the trademark was opposed (case B 001981417) by Edison S.p.A., an Italian company. They are known for electrical power production and sale, as well as their involvement in energy efficiency solutions, gas import infrastructures and storage plants. They claimed that Eolus´ “e” provokes a likelihood of confusion in comparison to their trademark, a figurative trademark resembling a letter “e” (EUTM no: 003490851). In addition, given the reputation Edison enjoys as a company, as well as the notoriety of their trademark, Eolus´ “e” should be deleted for all classes.
The Opposition Division of the EUIPO examined the similarity of goods and services, the similarity of the trademarks and the likelihood of confusion. Starting with the similarity of goods and services, the Opposition Division deduced that it varies from identical (for the distribution of electrical energy and the production of electrical energy) to dissimilar.
Next, the visual similarity of the signs consisted of them both being decorated letters “e”. However, while Eolus´ “e” is blue and with an impression of a gush of wind blowing it away, Edison´s “e” is grey and simulating two circles partially overlapping. When spoken, both signs would be pronounced equally, irrespective of the territory of the speaker. Conceptually, the Opposition Division noticed that the analogous note they have is the reference to energy. Therefore, taking all abovementioned into consideration, the signs were similar.
Touching on the topic of the claimed acquired distinctiveness, the Opposition Division stated that the evidence offered by Edison only showed that it was a big company in Italy, and did not demonstrate an enhanced distinctiveness.
In conclusion, the Office mentioned the problematics of a single letter trademark. They stated that the EUIPO does not consider them distinctive, unless sufficiently stylized to overcome the fact that they are, in essence, only one letter. In this case, both “e”s are embellished enough, and done so in a very different manner. Therefore, the likelihood of confusion is small, and the opposition should be rejected.
On 28 November 2013, Edison appealed (decision R2358/2013-1 of 25 February 2015), building the case predominantly around their claim that their goods and services were either identical or highly similar to the applicant´s.
EUIPO´s Board of Appeal stated that Edison´s trademark was more reminiscent of two crescents than the letter “e”, but, given the company´s longstanding presence in the energy business, the sign could have been recognized as a letter. This did not undermine the fact that the trademarks in question were visually quite different, both in color and the font. The question if the sign was perceived as a letter was also relevant for the phonetic and conceptual similarities. If seen as a letter, they are phonetically and conceptually identical. However, the Board of Appeal was of the opinion that the consumer would primarily describe the sign, not pronounce it, making phonetic similarity non-existent. As for the conceptual similarity, single letter marks could be backed by a concept if they maintained a link to the goods or service, which in this case, they did. However, the usage of the letter “e” was descriptive, and therefore, limited its importance. The other possible concept, the concept of motion, was only present with Eolus´ trademark, thus differentiating the signs even further.
The Board of Appeal did not fully agree with Opposition Division regarding the one-letter trademarks. They stated that they are not devoid of any distinctive character, unless proven differently. However, their distinctiveness is harder to establish. What does not help is the common and widespread use of a single letter to abbreviate its owner or service, making them frequent and less special. The saving grace are the add-ons and decorations to the letter, which, just as in this case, can augment the mark´s distinctiveness.
As for the contested goods and services, the Board of Appeal restated that the goods and services range from identical to completely dissimilar. However, even for the goods and services which were similar, Edison failed to show that both undertakings were offering them. Therefore, the only services where the consumer might be led into confusion were the identical “Electricity distribution of wind power energy” and “Energy production of wind power energy”. In this scope, the Opposition Division´s decision was overturned.
Decision of the EGC
Despite the partial success, Edison decided to take the matter to the EGC. The decision (case T-276/15) was brought on 14 March 2017, with no good news for Edison.
When talking about the similarities of the signs, the EGC agreed in the entirety with the Board of Appeal, stating that the visual one was low, phonetic would either not exist or be identical, and the conceptual one existed only if they were both regarded as an “e”, in which case it would also be descriptive.
As for the goods and services, Edison did not offer any additional evidence, but rather relied on the fact that “as a matter of principle” or “is well-known that” the goods were produced or provided by the same undertakings. The ECG could not accept this logic. In addition, the Court argued that, even if they were produced by the same manufacturer, it would make them similar, and not identical.
A second question that Edison raised was the claimed “point-blank” inadmissibility of their evidence showing enhanced distinctiveness. The EGC stated that it was quite the contrary; the Board of Appeal did take all the provided documents into consideration, but deemed them misplaced, as they showed the company´s economic success instead of public recognition of the mark.
All this led the EGC completely to uphold the Board of Appeal´s decision.
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