Is Elton confusingly similar with Elon?

When you read the names Elton and Elon, two prominent representatives of people bearing these names might come to mind. But is this association sufficient to exclude a likelihood of confusion? This question was answered by the Board of Appeal (‘BoA’) of the European Union Intellectual Property Office (‘EUIPO’) in a recent decision.

 

Background

On 15 June 2022, Universal Brand Group Pty Limited (‘Universal Brand’) filed for registration of EU trade mark no. 018716750

covering goods and services in classes 9, 11 and 30, all related to coffee and coffee makers.

Elon Group AB (‘Elon Group’) filed an opposition on the basis of EU trade mark no. 017946692 ‘ELON’ and Swedish trade mark no. 551583 ‘ELON’ both covering a large number of goods and services, inter alia in classes 9 and 11.

The European Union Intellectual Property Office (‘EUIPO’) upheld the opposition for many goods in classes 9 and 11 of the contested application. Since a cancellation application was pending against Elon Group’s EU trade mark no. 017946692 ‘ELON’, the Opposition Division based its conclusion that a likelihood of confusion (Art. 8(1)(b) EUTMR) existed on the earlier Swedish trade mark no. 551583 ‘ELON’. Universal Brand appealed to the EUIPO’s Board of Appeal (‘BoA’).

The Board of Appeal’s decision

The BoA dismissed the appeal (case R2553/2023-5).

The relevant public was found to consist of the average end-consumers and professionals in Sweden, whose level of attention varied from average to high because of the varying prices, sophistication, or terms and conditions of the relevant goods and services.

The earlier mark ‘ELON’ was afforded an average level of inherent distinctiveness because it had no meaning for the goods and services.

Universal Brand contended that there is only limited similarity between the goods without providing any arguments. This caused the BoA simply to refer to and adopt the reasoning of the Opposition Division, with the result that the goods were identical or similar. 

 

Similarity of the signs

Visually, the BoA considered the signs to be highly similar. The contested mark’s stylisation was merely ornamental. The intermediate position of the additional letter ‘T’ made it visually less noticeable compared to the identical beginnings and endings.

Phonetically, Universal Brand relied on a lingustic report from the company RWS and alleged that this company is “a global and prominent leader in translation services, language services and intellectual property support solutions”. Apart from this averment, Universal Brand only provided a link to RWS’ website.

The BoA disregarded this report because Universal Brand did not provide sufficient information about RWS and the background of the language specialists which were consulted. The link to RWS’ website was not considered a valid piece of evidence. Neither the EUIPO nor the BoA are required to examine on their own motion links indicated in the parties’ submissions in order to retrieve information from them.

The BoA found an above-average degree of phonetic similiarty for the relevant Swedish public. Both names are two-syllable words with a similar syllable structure and similar rhythmic pattern where the stress is on the first syllable.

As regards the conceptual comparison, Universal Brand argued that the sign immediately evoked the “world-famous British pop singer Elton John”, while the public would associate the “worldwide famous Elon Musk” with ‘ELON’. Due to these conceptual differences, Universal Brand contended, the signs are not only dissimilar but the conceptual differences counteracted any visual and phonetic similarities.

The BoA disagreed. The neutralisation of visual and phonetic similarities by conceptual differences required that at least one of the signs at issue had, for the relevant public, a clear and specific meaning which can be grasped immediately.

The BoA confirmed the Opposition Division’s finding that at least a non-negligible part of the Swedish public would not immediately associate Elton John with 'ELTON' and Elon Musk with 'ELON'.

Universal Brand had submitted Wikipedia articles and other online documents in order to establish that Elton John and Elon Musk are famous. The BoA considered them insufficient because they merely affirmed the notoriety of these individuals but did not provide concrete evidence that the Swedish public would commonly associate the first names ‘ELTON’ or ‘ELON’ specifically with these individuals. Additionally, Elton John and Elon Musk are predominantly recognised by their full names and the goods (such as coffee machines) had no connection to these persons.

The BoA also noted that the case law on whether names convey a meaning for the purpose of the conceptual comparison is not settled:

According to one line of case-law, the fact that marks contain surnames or first names opens the possibility of a conceptual comparison but does not necessarily imply that there is a conceptual similarity, which can result only from an examination of each individual case. According to a second line of case-law, a conceptual comparison between trade marks composed of surnames or first names of persons is in principle impossible and neutral, unless there are special circumstances which make such a comparison possible, such as, for example, the celebrity of the person concerned or the semantic content of a name (see judgment of 16 December 2020, Production Christian Gallimard v EUIPO – Éditions Gallimard (PCG CALLIGRAM CHRISTIAN GALLIMARD), T-863/19, not published, under appeal, EU:T:2020:632, § 101-106 and the case-law cited).

The BoA sided with the latter position holding that the fact that both marks refer to names did not influence the comparison of the signs.

Likelihood of confusion

The BoA concluded that the identity or similarity of the goods, the high degree of visual and above-average degree of phonetic similarity between the signs as well as the normal degree of inherent distinctiveness of the earlier mark led to a likelihood of confusion.

The conceptual differences were not sufficient to change this result. The BoA held that not the entire public would associate the trade marks with Elton John or Elon Musk.

Comment

A few takeaways from this decision:

1. The BoA is unlikely to conduct an in-depth review of assessments made by the EUIPO’s Opposition Division if those assessments are only contested with general averments. Appellants should make the effort and put forth arguments for why they believe a specific assessment to be flawed.

2. Neither the Opposition Division nor the BoA will follow links in the parties’ submissions and review their content. Information on websites can only be introduced into the proceedings by including them as screenshots in the submission or an annex.

3. The case law on whether names have a meaning and whether this meaning can exclude a likelihood of confusion by neutralising visual and phonetic similarities is still not settled. I have summarised this case law here.

4. Never underestimate the power of a non-insignificant part of the public, which does not know or do what the majority knows or does. The perception of such a minority is sufficient to render a sign non-distinctive or to cause the EUIPO accept a likelihood of confusion.


The picture is by cottonbro studio and used under the licensing terms of Pexels.com.