The case: Its creator was probably particularly proud of this eco-brand, one of whose features was a catchy, easy-to-remember rhyme: Prima Klima. The brand’s logo was registered as a Union trade mark by the managing director of the Czech company PRIMA KLIMA TRADING, for ventilation and heating equipment, among other things:

PRIMA_KLIMA_trademark_application_goodwillprotect.com.png

However, the French oil company Primagaz SA took issue with this eco-brand. Primagaz SA is a shareholder of PRIMAGAS Energie GmbH, one of the largest German suppliers of liquid gas. The French company owns a Union trademark consisting of its name, which is also protected for ventilation and heating equipment, among other things:

PRIMAGAZ_trademark_goodwillprotect.com.png

Primagaz SA filed an opposition, claiming a likelihood of confusion between the two signs.

However, the Examining Division and subsequently the Board of Appeal of EUIPO disagreed. There was no similarity between the two marks. The signs only coincided in the advertising keyword ‘PRIMA’. However, this did not contain any reference to the commercial origin of the ventilation and heating devices. The consumer could not distinguish the commercial origin of goods on the basis of a similarity in advertising slogans, and therefore would not be likely to falsely attribute them to the same company. There was no likelihood of confusion between the two marks.

 But Primagaz did not give up. The company took legal action before the Court of Justice of the European Union – and was proven right.

But why? The decision was based on an exemplary analysis of the brands.

The EUIPO’s analysis had essentially been based on the view of German and Austrian consumers. For this group, the element ‘PRIMA’ in both trade marks would have only a laudatory character, and the similarity of the marks in this general advertising catchword could not give rise to a likelihood of confusion.

However, both brands were Union brands. Therefore, it was not only German and Austrian consumers that mattered. All consumers were relevant, in every single Member State of the European Union. The Court of First Instance of the European Union therefore examined how consumers in the other Member States understood the signs and whether, in any event, a likelihood of confusion could be assumed for those consumers.

On this basis, it found that for consumers in Italy, the word PRIMA did not have a laudatory character. PRIMA is a feminine adjective there, meaning ‘the first’ in the sense of a number. In relation to ventilation and heating units, this does not represent a laudatory statement. Nor does it describe any characteristics of the appliances. To the Italian consumer, the word PRIMA may therefore indicate the origin of the ventilation and heating units from a particular business. It is distinctive for them.

However, this does not apply to the other sign elements ‘KLIMA’ and ‘GAZ’ in Italy. The Italian consumer takes these words to have the same meaning as the German consumer. In relation to the ventilation and heating devices designated by the trade marks, ‘KLIMA’ and ‘GAZ’ merely represent characteristics. From references in trade marks to characteristics of the products designated by the trade marks, the consumer cannot infer the commercial origin of the products. Such elements in the register marks have only a very low distinctiveness in collision cases.

The analysis of the marks by the General Court of the European Union therefore showed that consumers in Italy focus on the sign element PRIMA to distinguish the ventilation and heating devices bearing the marks. Both marks have this element as a key distinguishing feature of the ventilation and heating devices. There is therefore a likelihood of confusion between the signs in Italy.

The Court of First Instance of the European Union also found similarly for French consumers, but it was not relevant any more.

As a result, the PRIMA KLIMA environmental trade mark was refused protection for ventilation and heating equipment. The fact that the trade mark was a particularly successful environmental trademark from a German and Austrian point of view was irrelevant.

Court of Justice of the European Union of 24 September 2015, T-195/14.

Learnings: If you have developed a catchy eco-label for certain products, check the label carefully according to the logic applied above. Determine exactly how the designation will be understood by the public you want to reach with the products in the individual Member States. On this basis, you can then assess not only the registrability of the mark but also, in particular, any likelihood of confusion it may cause with other marks. The likelihood of confusion in a single Member State is already sufficient to deny protection to a European Union trade mark. If you take these steps in advance, you can avoid costs down the line!

 

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