Oatly wins again
B 3 117 184, Oatly AB v Jean-Louis Klein: Decision confirms an established stance, reports Erika Coccia.
B 3 117 184, Oatly AB v Jean-Louis Klein, EUIPO, 7th June 2022: Decision confirms an established stance, reports Erika Coccia
Key points
- Based on the unitary character of the EU trade mark, a likelihood of confusion for only part of the relevant public within the EU is sufficient to reject the opposed application
- Differences in the middle parts of word marks play a minor role when assessing the visual and phonetic similarity of the marks
- The conceptual assessment of a word sign in a specific language of the EU must be assessed in relation to all the territories concerned, including those EU countries where English is not a native or commonly known language
- Even consumers who pay a higher degree of attention when selecting products will rely on their imperfect recollection of the marks instead of artificially examining or comparing the marks
On 28th April 2020, Oatly AB (the Opponent) filed an opposition against EU trade mark (EUTM) application No. 18189132 for OAKY covering “Food supplements” in class 5 (the Application), which had been filed in the name of Jean‑Louis Klein (the Applicant).
The Opposition was based on a claim of likelihood of confusion, under Article 8(1)(b) of the EU Trade Mark Regulation (EUTMR), with the Opponent’s prior EUTM registration No. 16364441 for OATLY.
That registration (the Earlier EU Mark) covered various goods in class 5 including: “Food supplements and dietary food supplements”.
The Opponent further claimed under Article 8(5) EUTMR that use of the Application would take, without due cause, unfair advantage of, or be detrimental to the distinctive character and reputation of, its prior Swedish trade mark registration No. 350943 OATLY, covering “Oat‑based beverages for use as a milk substitute; milk substitutes containing oat” in class 29, “Ice‑cream; sauces (condiments)” in class 30, and “Non‑alcoholic beverages; oat‑based drinks” in class 32.
The Opponent filed extensive evidence to support the claim that its OATLY mark enjoys enhanced distinctiveness and reputation in Sweden for the above goods in classes 29, 30 and 32, but none of this evidence was assessed by the Opposition Division (OD) for reasons of procedural economy.
The OD upheld the opposition in its entirety under Article 8(1)(b) EUTMR based on a likelihood of confusion between the Application and the Earlier EU Mark, taking into account the respective marks’ inherent distinctiveness.
Identical goods
The OD held that the Applicant’s goods “Food supplements” in class 5 and “Food supplements and dietary food supplements” in class 5 under the Earlier EU Mark are identical goods, aimed at the public at large as well as a specialist public, for example professionals with knowledge or expertise in the nutritional field.
The degree of attention of these consumers is considered higher than average because nutritional or dietary supplements are often purchased to cure, prevent or improve health conditions.
When assessing the conceptual similarity of the marks in suit, which either include or consist of English dictionary words, the OD focused its analysis on non‑English speaking consumers within the EU who have no or a basic understanding of English and therefore will not be able to differentiate the marks conceptually.
The OD further determined that neither the word “OAT” in the Earlier EU Mark nor “OAKY” are English words used in common parlance and that it would be unusual for the non‑English speaking part of the EU to be familiar with these terms.
This is in contrast to the submissions put forward by the Applicant’s lawyers, who alleged that consumers in European countries with a basic knowledge of English will understand the word “OAT”, as this word often appears on bilingual menus or on product labels, which are often bilingual.
From a visual and aural standpoint, the OD ruled that the respective marks are similar to an average degree due to the coinciding beginning “OA*” and the ending letter “*Y”.
The marks were found to differ in the middle letters, “TL” and “K”, which will not catch the eye as easily as the beginning letters of the marks because consumers read from left to right and will therefore place a greater emphasis on the first part of a trade mark.
The OD rejected the Applicant’s argument that OATLY and OAKY are short signs, with small differences between the marks being sufficient to distinguish them overall.
The OD clarified in its decision that, according to EUIPO practice, short signs consists of up to three letters or numbers, while the marks in suit are made up of five and four letters.
From a phonetic point of view, the OD held that the relevant public within the EU will perceive the marks as made up of three syllables (/o/a/tly and /o/a/ky) with a similar rhythm and intonation.
Confusion likely
The OD concluded that, based on an overall assessment of the marks, there is a likelihood of confusion between the Application and the Earlier EU Mark due to the identical goods and the average degree of visual and phonetic similarity between the marks.
This decision has confirmed the stance adopted by the Court of First Instance in New Look (T‑435/07), where it was held that a word mark in a specific language (in both cases an English term) must be assessed if it is understood by the relevant public in the territories concerned, particularly in those territories of the EU in which English is not the native language or for those territories, such as Spain or Poland, where a basic understanding of English is not the norm.
Erika Coccia is a Senior Chartered Trade Mark Attorney at Lewis Silkin LLP.
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