Tropical likelihood of confusion at the EUIPO

In October 2003, Mr Tadeusz Ogrodnik (the Applicant) filed an application for the EU figurative mark "Tropical" (above left) for products including veterinarian and animal food products in classes 5 and 31.

After a number of decisions, the First Board of Appeal declared that the contested mark was invalid for all of the goods concerned. The Applicant appealed the decision before the General Court.

The Court observed that it was not disputed by the parties that the marks were similar. This is because, considered as a whole, they are phonetically identical, and, on the visual and conceptual levels, highly similar.

The Court noted that the Board of Appeal erred in finding that there is a likelihood of confusion in respect of ‘products and preparations for the breeding of birds, reptiles, amphibians' in Class 31 and ‘veterinary, therapeutic, disinfecting and sanitary products and preparations for use in terraristics' in Class 5.

This is because, it is not possible to find that there is a likelihood of confusion if the cumulative conditions of Article 8(1)(b) of Regulation No 207/2009 are not met:

• the marks in question need to be identical or similar
• the goods and services covered by the mark at issue must also be identical or similar.

According to settled case law, the likelihood of confusion must be assessed globally, according to the relevant public's perception of the signs and the goods and services in question.

The Court also noted that the absence of a likelihood of confusion may be inferred from the peaceful nature of the coexistence of the marks at issue on the market concerned only where the proprietor of the contested mark demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the mark upon which he relies and the mark of the other party to the proceedings and provided that the mark upon which it relies and the mark at issue are identical.

It is not possible to infer from the mere fact that the two marks at issue coexisted without challenge over a long period that that coexistence was based on the absence of a likelihood of confusion on the part of the relevant public.

The Court confirmed the findings of the Board of Appeal which stated that the evidence in the present case was insufficient to demonstrate that the coexistence of the marks at issue is based on the absence of any likelihood of confusion between them.

Furthermore, the Court observed that the absence of any likelihood of confusion cannot be inferred from the mere fact that the Cancellation Applicant did not, at an earlier stage, oppose the application. The Court rejected, as unfounded, the Applicant's argument to the peaceful coexistence of the two marks.

In conclusion, the General Court confirmed the findings of the Board of Appeal stating that there was a likelihood of confusion in relation to:

• 'food in the form of flakes, granulates, grains, extrudates and tablets, dried and lyophilised natural food for fauna, especially for fish, ornamental fish, birds, reptiles, amphibians and breeded small animals'
• 'food for fauna containing nutritives'
• 'products and preparations for the breeding of fish, ornamental fish and breeded small animals'
• 'products and preparations for the cultivation of plants and aquarium plants', in Class 31
• 'disinfecting and sanitary products and preparations for use in aquaristics [and] fauna breeding'
• 'veterinary, therapeutic, disinfecting and sanitary products for flora cultivation' in Class 5.

The Board of Appeal erred in finding that there is a likelihood of confusion regarding 'products and preparations for the breeding of birds, reptiles, amphibians' in Class 31 and 'veterinary, therapeutic, disinfecting and sanitary products and preparations for use in terraristics' in Class 5. The Court annulled the invalidity decision concerning those goods.

Case ref: T 276/17

Fabio Lo Iacono