"ELTON" v "ELON": conceptual counteraction?

The names Elton and Elon are associated with two prominent individuals, each recognised for different reasons. Is this conceptual difference sufficient to eliminate the possibility of confusion between the two? No, says the EUIPO's Board of Appeal in a case which bucks the current trend.

What has happened?

• In an appeal of an opposition decision, the EUIPO Board of Appeal has confirmed that a likelihood of confusion exists between an earlier Swedish registration for ELON and a later EUTM application for ELTON (for identical and similar goods). 

• The EUTM applicant had argued that, since both marks represent the first names of globally recognised individuals (Elon Musk and Elton John), the average consumer would not confuse them. This is an application of the so-called 'conceptual counteraction' or 'neutralisation' principle – that the average consumer will not confuse marks (and perhaps will not even view them as similar) where they have distinct conceptual meanings. However, in this case, the Board held that conceptual counteraction did not apply because a non-negligible proportion of the Swedish public would not make the association between the marks and Elon Musk / Elton John. 

• This is an interesting decision given that the recent trend has been for the EUIPO to find conceptual counteraction in numerous cases. This is despite the fact that the ECJ has specified that conceptual counteraction should only arise in 'exceptional circumstances' (where at least one of the marks has a clear and specific meaning which can be grasped immediately by the average consumer). 

• Given the uncertainty, brand owners should take care to address any conceptual differences between marks in arguments and evidence, particularly before the EUIPO but also the UKIPO. The position seems more settled in the UK where conceptual counteraction less rarely wins out and it is clear that there can be a likelihood of confusion even if two marks are not conceptually similar. This was reinforced by the Court of Appeal in the recent Vetsure decision (although see our article on the recent MOTUS / LOTUS case for an example of when conceptual counteraction did win out in the UK).

• The decision is also a reminder that there is a division in CJEU case law on whether or not personal names convey a conceptual meaning. It is also a reminder that evidence has to be in the correct form at the EUIPO to be taken into account (for more on that, see our article here).

Want to know more?

The Opposition Division's decision

In June 2022, Universal Brand Group Pty Limited applied to register a figurative EUTM for "ELTON" (depicted below) covering the following goods:

• Class 9: Software for remote control and intelligent operation of heating apparatus for dispensing hot beverages and installations for heating beverages. 

• Class 11: Heating apparatus for dispensing hot beverages; Installations for heating beverages; Coffee machines, electric; Coffee capsules, empty, for electric coffee machines. 

• Class 30: Coffee in whole-bean form.

The application was opposed by Elon Group AB for all goods based on prior registrations for “ELON” in the EU and Sweden, which covered a wide range of goods and services in Classes 9, 11, 21, 35, 37 and 42.

In November 2023, the Opposition Division partially upheld the opposition for all goods in Classes 9 and 11, ruling that there was a likelihood of confusion. The decision was based on the opponent's Swedish registration only since its EUTM was itself subject to cancellation (and – if there was a likelihood of confusion between the prior Swedish mark and the application then the same would be true of the prior EUTM).

The Board of Appeal's decision

The Board dismissed the trade mark applicant's appeal and upheld the finding of a likelihood of confusion. Key elements of its decision are as follows:

• A linguistic report submitted by the EUTM applicant which aimed to show the differences in pronunciation between the marks across EU languages was not taken into account because it was in the form of a URL link. Evidence must be attached as full screenshots with dates and links, not URLs. The Board concluded that the marks are aurally similar to an above-average degree to the relevant Swedish-speaking public.

• Evidence in the form of  Wikipedia articles and online content to show the fame of Elon Musk and Elton John was insufficient to establish conceptual counteraction (and distinguish the marks) since it did not show that the Swedish public would commonly associate the forenames Elon and Elton alone with these individuals. Elon Musk and Elton John are usually referred to by their full names and the goods in question have no connection to them. The marks do not therefore have a "clear and specific" meaning for the Swedish public as a whole – while some will perceive the marks as alluding to Elon Musk and Elton John, others will perceive them as simply forenames or even as fanciful terms. 

• This decision can be contrasted with numerous recent decisions in which the EUIPO and CJEU has found conceptual counteraction, most notably Rodríguez Ruiz v EUIPO where the General Court held (of its own volition) that the sign LENNON would clearly be associated with the famous artist John Lennon (when used for alcoholic drinks) based on well-known facts – a decision that might come as a surprise to some in the UK!

• The Board highlighted that the case law is uncertain about whether or not personal names convey a conceptual meaning such that a conceptual comparison between marks (where one or both consists of a personal name) is even possible. One line of cases say that personal names do convey a conceptual meaning; another line of cases says that they do not or only do in special circumstances eg where one of the marks is a for a famous person.

What does this decision mean for you?

• Do not underestimate the influence of a non-insignificant part of the public that may not share the same knowledge as the majority. 

• Ensure that any conceptual differences between marks are adequately addressed in evidence and arguments before the EUIPO (and the UKIPO). The EUIPO and CJEU is known to raise conceptual counteraction of its own volition. 

• Remember that case law is divided on whether marks consisting of personal names convey a conceptual meaning. If you are involved in a dispute concerning such a mark (particularly at the EUIPO), review case law and arguments carefully. 

• Make sure that evidence is in the correct form – the EUIPO will not click on links to access evidence (more here).

This article was primarily written by Emily Hufford.