Entirely included in the mark

GvEA, 12 November 2008, zaak T-281/07, Ecoblue AG tegen OHIM / Banco Bilbao Vizcaya Argentaria, SA (Nederlandse vertaling nog niet beschikbaar).

Gemeenschapsmerken. Oppositieprocedure op grond van ouder gemeenschapswoordmerk BLUE tegen aanvraag gemeenschapswoordmerk Ecoblue. Oppositie toegewezen.

“37. With regard to the existence of a likelihood of confusion, it follows from the foregoing that the services in question are partly identical and partly similar, that the marks at issue display visual, phonetic and conceptual similarities, since they are partially identical on account of the fact that the earlier mark is entirely included in the mark applied for, that the earlier mark still has an independent distinctive role in the mark applied for and that at least a part of the relevant public – which the applicant has not shown to be an insignificant part – does not display a level of attention which is greater than the average. It follows that, even if the distinctive character of the mark BLUE is limited, the Board of Appeal did not err in finding that a likelihood of confusion had been established.

38. The applicant’s argument regarding the supposed impossibility of applying to this case the legal principles relating to series of marks is irrelevant in that regard. As OHIM observes, the contested decision does not indicate that the Board of Appeal based its decision on the fact that the opponent is proprietor of several marks containing the word ‘blue’ in order to conclude that the likelihood of confusion was established. It found merely that the mark Ecoblue could be perceived as a variant of the mark BLUE, in particular because the word element ‘eco’ could be considered as descriptive of an essential quality of the services in question, which have an economic, business-oriented purpose, and that the relevant public might therefore associate the mark Ecoblue with the mark BLUE. It follows from the foregoing that that finding of the Board of Appeal was correct. Moreover, according to Article 8(1)(b) of Regulation No 40/94, the likelihood of confusion includes the likelihood of association. The applicant’s argument that in the present case there can be no likelihood of confusion in the sense of a likelihood of association under that article cannot therefore succeed.”

Lees het arrest hier.