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Monday, 26 October 2015

Greek mastic in trade mark trouble: Can you fight a CTM with your eyes set in Greece?

The General Court has disappointed Enosi Mastichoparagogon Chiou (The Chios Mastiha Growers Association - EMC) with its ruling in case T-309/13 (Enosi Mastichoparagogon Chiou v OHIM / Gaba International Holding GmbH), but the notably successful union of mastic producers, which put the Greek mastic on the international map, may need to draw certain lessons from this dispute.


Back in 2005, EMC filed an international trade mark application designating the EU for its the well-known in Greece “ELMA” mark in connection with, inter alia, ‘Chewing-gums for medical and dental purposes containing Chios mastic, dental mastic and dental materials containing Chios mastic, mouth solution for medical, dental and hygienic purposes containing Chios mastic’ in Class 5. The application was restricted to indicate Chios mastic as an ingredient of the relevant products, though this did not prove enough to save the mark.

Gaba International Holding GmbH opposed the mark on the basis of its earlier CTM No. 000703546 for the word mark ELMEX, designating inter alia ‘Cosmetic products and preparations; products and preparations for buccal and dental care’ in Class 3, ‘Pharmaceutical and hygienical products and preparations; pharmaceutical products and preparations for buccal and dental care’ in Class 5, as well as ‘Tooth brushes’ in Class 21.

The Opposition Division upheld the opposition, on the basis of Article 8(1)(b) of Regulation No 207/2009 and so did the Fourth Board of Appeal of OHIM by its decision of 26 March 2013 (‘the contested decision’). As regards the relevant public, the Board of Appeal found that it consisted of average consumers within the European Union with an average level of attention. Then, after comparing the goods in question, it held that they were highly similar and that the signs displayed an average degree of visual and phonetic similarity, but that it was not possible to carry out a conceptual comparison because the signs lacked any meaning.  Accordingly, it upheld the Opposition Division’s decision to the effect that there was a likelihood of confusion between the marks at issue, within the meaning of Article 8(1)(b) of Regulation No 207/2009.

The General Court did not depart from the Board of Appeal’s view. First, it rejected as inadmissible, EMC’s allegation and supporting evidence regarding the reputation of ELMA, which were first relied upon by the EMC with its reply before the General Court. The rejection of those new allegations was based on article 135(4) of the Rules of Procedure of the General Court, according to which the parties’ pleadings before the Court may not change the subject-matter of the proceedings before the Board of Appeal, as the Court’s review cannot go beyond the factual and legal context of the dispute as it was brought before the Board of Appeal. Moreover, the General Court took the view that there were no special circumstances to justify the submission before the Court of documents which could have been presented during the proceedings before OHIM.

The mastic tree - where it all begins
Moving to address ECM’s single plea that the Board of Appeal had misapplied Article 8(1)(b) of Regulation No 207/2009, the Court first dealt with the argument that the consumer of the goods covered by the mark applied for is more prudent and informed than the average consumer. EMC’s argument was that the goods at issue are intended for a consumer who, since he has a medical problem or wishes to protect his teeth, chooses a product with therapeutic properties. The Court disagreed ruling that even if it were accepted that the goods covered by the mark applied for are also purchased by certain consumers who select them with particular care, for medical reasons, that does not alter the fact that they are intended for all consumers, the great majority of whom display only an average level of attention when purchasing such goods. In fact, the file shows that the goods covered by the mark applied for, while ‘mainly’ sold via specialist shops known as ‘mastihashops’, may also be sold in other shops, such as supermarkets, drugstores or pharmacies, as the applicant itself acknowledges [this was obviously a key part of the dispute and the rejection of the relevant argument by the Court paved the way to uphold the finding of likelihood of confusion].

In comparing the goods involved, the Court noted that the Board of Appeal in fact compared the goods at issue with those of the mark applied for in Classes 3 and 21, in the same way as the Opposition Division. EMC’s argument in this terrain was that the Board of Appeal  failed to take into consideration that, unlike the goods covered by the earlier mark, the goods covered by the mark applied for contain ‘Chios mastic’ and that the Board of Appeal did not take into consideration that ingredient or its reputation.The Court observed that the similarity between the goods in question must be assessed in relation to the finished goods, namely, chewing gum, dental mastic, dental materials and mouth wash respectively, all of which are intended for medical and dental use and contain Chios mastic, in so far as the applicant’s goods are concerned, and cosmetic products and preparations and products for oral and dental care, in so far as the intervener’s goods are concerned. It also accepted that it is also in the light of the mastic that some consumers choose the goods covered by the mark applied for and that it is a basic ingredient of the contested goods, which, however, does not change their intended purpose, use or distribution channels and which, therefore, has no effect on the assessment of the similarity between those goods compared and those covered by the earlier mark [another important element in the course of rejecting the 'mastic particularity' argument raised by EMC]. Moreover, the chewing gum’s PDO status merely designates the geographical origin of a product and must therefore be considered irrelevant to the assessment of similarity between the goods in question. Accordingly, it was held that the Board of Appeal was right to conclude that the goods in question are highly similar.

In comparing the signs ELMA vs. ELMEX, the Court noted that it is, in general, accepted that the consumer attaches greater importance to the beginnings of words, so that resemblance or difference in the beginnings of words is an important factor for the purposes of assessment and that in the case of relatively short word marks, the central elements are as important as the elements at the beginning and end of the sign. Also, what matters in the assessment of the visual similarity of two word marks is rather the presence, in each of them, of several letters appearing in the same order. ELMA has four letters and ELMEX has five. Those marks begin with the same letters, namely ‘e’, ‘l’ and ‘m’, and differ only in terms of their end letters, namely ‘a’ for ELMA and ‘e’ and ‘x’ for ELMEX. They are, therefore, relatively short word signs, the first parts of which are identical, and the difference between the end letters is not sufficient to counterbalance that identity. 

As regards the phonetic comparison, it should be noted that the marks at issue are similar in so far as they have two syllables, ‘el’ and ‘ma’ and ‘el’ and ‘mex’ respectively, and share the same first syllable, ‘el’. Furthermore, the second syllable of each mark starts with the letter ‘m’, which is pronounced in the same way for both marks. The fact that the common syllable, ‘el’, appears at the start of the words increases the phonetic similarity of the signs, while the difference in the endings of the words is not sufficient to outweigh that similarity.

As per the conceptual comparison, the Court endorsed the Board of Appeal’s findings that the word ‘elma’ is an unusual female first name and is also the name of four small towns in the United States [which, for what it’s worth, a Greek consumer would have never thought], and that the word ‘elmex’ is devoid of any meaning. So since ‘elmex’ has no meaning in any of the languages of the European Union, which is common ground, it is not possible to make a conceptual comparison of the signs.

The Court also ruled that the fact that the word ‘elma’ corresponds to the Greek abbreviation ‘EΛMA’, which derives from the expression ‘Ελληνική μαστίχα’ meaning ‘Greek mastic’, as the applicant submits, cannot lead to a different conclusion. That line of argumentation presupposes that the relevant public not only knows the Greek alphabet but also recognises that abbreviation. Since that alphabet is known outside Greece and Cyprus only by a more erudite category of consumers, most European consumers will not be in a position to establish such a connection [this blogger would think the same would apply to most Greek consumers as well].

In view of the above, the Board of Appeal’s finding of likelihood of confusion was considered correct and EMC’s action was dismissed.

It is not uncommon for Greek entities to file CTMs which have an evocative meaning for Greek consumers, but would not mean anything to the rest of the Europeans. This blogger understands that Greek entities do not differ from other EU brand owners in that regard. However, in such cases, the relevant argumentation relying on domestic meaning or significance, even if timely put forward, will generally not suffice to overcome application of the standard confusing similarity rules of the CTM system. It would be harder for the brand owner, but might prove more efficient, to go back to the drawing board and design a different brand including, if possible, some of the features of the domestic one. If not, then established EU wide use prior to filing may be the only alternative to an altogether new brand.   

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