EUIPO Trademark Decision: OTTO vs. OTTOSUN

In its decision of 10 January 2019, the European Union Intellectual Property Office (EUIPO) Board of Appeal found that there was a likelihood of confusion between the applied EU trademark (EUTM) “OTTOSUN” and the earlier EUTM “OTTO” for certain goods in classes 9 and 11.

                Earlier EUTM                                                                               Applied EUTM

               No. 013713151                                                                          No. 016238172

            (Word/device mark)                                                                         (Word mark)  

1. Background of the case

With an application filed in January 2017 the applicant, Guang Zhou Shang Ya Import and Export Trading Co., Ltd., sought to register the EUTM “OTTOSUN” for the following goods in classes 9 and 11 of the Nice Classification:

Class 9: Electric timers; Weighing machines; Vehicle breakdown warning triangles; Walkie-talkies; Microphones; Baby monitors; Loudspeakers; Automatic indicators of low pressure in vehicle tyres; Electricity measuring instruments; Inverters [electricity]; Electrical plugs; Fire extinguishers; Head protection; Spectacles; Rechargeable batteries.

Class 11: Light bulbs; Lamps; Lighting apparatus; Ceiling lights; Bicycle lights; Lanterns for lighting; Air cooling apparatus; Air-conditioning installations; Hand-held electric hair dryers; Space heating apparatus; Mixer taps for water pipes; Bath tubs; Water disinfection apparatus; Gas stoves; Gas stoves utilising flames in rotating form; Headlights for automobiles; Tail lamp bulbs.

The German company Otto (GmbH & Co KG) opposed the registration based on its earlier figurative EUTM “OTTO”. The registration covered inter alia the following services:

Class 35: Wholesaling and retailing of scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus for cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

The opponent claimed that there was a likelihood of confusion between the marks set out in the Article 8(1)(b) of the EU Trade Mark Regulation.

The EUIPO Opposition Division found that the goods and services in question are partly dissimilar and partly similar to a low degree. Turning to the comparison of the marks, the Opposition Division stated that the respective marks produce a different overall impression, as the applied mark is significantly longer than the earlier mark. Therefore, it rejected the opposition in its entirety, holding that there is no likelihood of confusion between the marks.

In May 2018, Otto filed an appeal against this decision. The company argued that all goods and services in question are similar, and that the marks are highly similar, as the earlier mark is entirely included in the beginning of the contested mark. Further, Otto pointed out the distinctiveness of the mark “OTTO” had increased through decades of extensive use in Germany, and provided evidence that the mark is well-known in Germany.

The Board of Appeal delivered its decision last month on 10 January 2019.

2. Decision of the Board of Appeal

The Board of Appeal started with comparing the goods and services covered by the applied trademark, included in Classes 9 and 11, with those for which the earlier trademark was registered in Class 35. It held that the goods and services in question are in part similar and in part dissimilar.

The Board noted that the signs are visually identical to the extent that they coincide in the first four letters “OTTO”, which is also the only word element of the earlier mark. On the other hand, they differ in relation to the ending “-SUN” of the contested mark, and the coloring and stylization of the earlier mark. The Board concluded that the marks are visually similar to an average degree. As the first two syllables of the marks are identical, the Board found that there is an above-average degree of aural similarity between the marks.

Turning to likelihood of confusion, the Board rejected the opponent’s argument regarding the increased distinctiveness of the earlier mark and held that the inherent distinctiveness of the earlier mark is normal. The Board underlined that it does not need to accept any facts or evidence submitted for the first time before it. In any case, the evidence would not have been sufficient to prove the increased distinctiveness or reputation of the earlier mark in relation to relevant classes 9 and 11.

In light of the above-mentioned examination, the Board of Appeal found that there is a likelihood of confusion on the part of the relevant German public in respect of similar goods in classes 9 and 11. This means that Otto’s opposition was only partially successful. The decision is not yet final, since it is still possible to lodge an appeal against the Board of Appeal decision before the General Court of the European Union.

The decision was rendered in German and can be found here.