Case Law from the General Court: Apial/ Apiretal and Ye (Ape Tees)

APIAL / APIRETAL 

The company Nordesta GmbH sought registration of the word mark “APIAL” as a European Union Trade Mark (EUTM) before the EUIPO. 

The classes for which registration was requested were:

- Class 3: inter alia, cosmetics, other than make-up preparations; skin care preparations; scented oils; 

- Class 4: ‘Fuel and lighting devices; perfumed candles; aromatherapy fragrance candles; additives in connection with the aforesaid goods, included in this class’;

- Class 5: ‘Pharmaceutical preparations for skin care; nutritional supplements’.

Laboratorios Ern, owner of the earlier EUTM Apiretal, filed an opposition against this application, on the basis of the similarity between both marks and the goods at stake, pursuant to article 8.1 b) of the Regulation 2017/1001. Moreover, the pharmaceutical company also claimed the reputation of its earlier mark, under article 8.5 of the Regulation. 

First the opposition division of the EUIPO and then the Boards of Appeal (BoA), did not detect any risk of likelihood of confusion, dismissing the opponents’ claims. As a consequence, Laboratorios Ern escalated the case to the General Court. 

After having examined the appellant’s claims, the Court concluded that regarding the comparison of the goods designated, there was a low degree of similarity, especially as the goods included in classes 3 and 4 were completely dissimilar to the ones covered by the earlier mark. Even though both marks coincided in class 5, the goods covered were different, since Apiretal was registered for antipyretic pharmaceutical preparations, whereas Apial included other goods, such as skin care preparations. 

As regards the comparison of the signs, the Court confirmed that there was a low visual and phonetic similarity between both signs at issue (Apial/ Apiretal), and the lack of any relevant conceptual similarity. 

Therefore, the global assessment of the risk of confusion showed that there was a low degree of similarity between the goods covered, especially in classes 3 and 4, since they were completely dissimilar to the ones for which the earlier mark was registered. Both marks only coincided in class 5, but the goods at stake were different. In this sense, Laboratorios Ern was only able to prove genuine use for antipyretic pharmaceutical preparations in class 5. 

In addition to this, Laboratorios Ern could not prove the reputation of its earlier EUTM Apiretal since they did not submit any evidence to support this affirmation. As a consequence, claiming reputation for the earlier trade mark “Apiretal” was not considered. 

For these reasons, the Court rejected the appeal and confirmed that the ETUM could be registered, since no likelihood of confusion could be proved. 

Ye (APE TEES)

Another recent judgment from the GC, which shows the possible difficulties of trade mark proceedings after the UK’s withdrawal from the EU. 

Back in 2015, the applicant filed an application for a EUTM consisting in the drawing of a monkey with the verbal elements “Ape tees”. The classes for which the EUTM was sought were 3, 9, 14, 18, 25 and 35 of the Nice Agreement. 

An opposition was raised pursuant to article 8.4 of Regulation 2017/1001, by a UK-based company, Nowhere Co. Ltd, which claimed to be the owner of three earlier non-registered trade marks, that were used in the course of trade in the UK. 

The opposition and the following appeals raised by Nowhere Co. Ltd before the BoA were dismissed, on the basis that the UK was no longer part of the EU, and therefore could not rely on “the rules governing common-law actions for passing off under the law of the United Kingdom for the purposes of Article 8(4) of Regulation“. This means that when an opposition is raised, it must be based on an earlier trade mark registered in the European territory, and it will not be valid if based on UK trade marks. 

The Court, however, upheld Nowhere’s claims and ruled that the procedure started when the UK was still part of the EU. Therefore, the BoA could not dismiss the appeals raised only by arguing that the company was already a non-EU country. 

Finally, the GC annulled the contested decision of the BoA and ordered the EUIPO to re-examine the case again.