GO BY THE GOODS, NOT BY THEIR LABEL

When are "anti-pollution devices for motors and engines" different goods to "anti-pollution devices for motors and engines"? To find out, read one of the most recent batch of Opposition Division decisions to be posted on the OHIM website, Case 2183/2004 A-Invest SA v Erland Nilson AB, where Erland Nilson's application to register a figurative mark containing the word ENIT was opposed by A-Invest, who had fortuitously registered the word mark ENIT in Spain just a few months earlier. Since both parties wanted to use their highly similar marks for "anti-pollution devices for motors and engines", things looked grim for Erland Nilson -- but the Opposition Division came to their aid, saying:

"The fact that anti-pollution devices for motors and engines of the CTM are used to improve health, as are the opponent’s goods, does not render these goods similar. It can be seen that the nature of the goods and services in conflict are different as the opponent’s mark covers medicated products whereas the applicant’s marks covers devices and services. Their distribution channels are also different; the opponent’s goods being obtained in chemists’ shops, supermarkets, department stores and gardening shops while the applicant’s services are obtained by consultation and its goods obtained in industrial machinery outlets. Their method of use is also different. The goods of the opponent’s mark are aimed at the general public whereas the goods of the CTM are directed at a more specialised consumer namely machinery users while the services of the CTM are aimed at those requiring information technology support services".

The IPKat is delighted that the Opposition Division looks behind the labels given to goods for classification purposes and sees what they really are. Even so, he can't help wondering whether he wouldn't have been just a teensy-weensy bit confused himself, seeing two different lots of anti-pollution devices branded as ENIT.

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