E-POWER vs. VDL E-POWER: Nissan lost TM dispute

Nissan has lost a trademark dispute before the CFI: in vain, Nissan claimed likelihood of confusion between its earlier national trademarks E-POWER and the EU trademark VDL E-POWER – of the company VDL Groep BV. A company name as a distinctive element?

An interesting trademark dispute was heard before the European Court (CFI). On the one hand, the trademark of the plaintiff Nissan itself is interesting in times of worldwide conversion to electric mobility: it is the word mark E-POWER.

On the other hand, however, the contested trademark VDL E-POWER is almost identical; the only difference lies in the echo of the company name of the trademark applicant.

Facts

In May 2018, VDL Groep BV (Netherlands) applied for registration of VDL E-POWER as a European word mark.

Nissan immediately filed a notice of opposition against this trademark application. Nissan claimed likelihood of confusion and invoked its own E-POWER trademark. Nissan had applied for protection of this word mark both as a UK word mark (No. 3293755) and as a French mark (No. 4431504) in February and March 2018.

In 24 October 2019, the Opposition Division also granted Nissan’s application, on the basis of the UK word mark E-POWER. However, this decision was overturned by the Board of Appeal, which was subsequently appealed. It is true that the Board of Appeal considered the conflicting marks VDL E-POWER and E-POWER to be phonetically, visually and conceptually similar. However, as the disputed mark VDL E-POWER additionally contains the element “vdl”, there is no likelihood of confusion, the Board of Appeal decided.

Plaintiff Nissan before the CFI

Nissan then brought an action before the European Court, which ruled on the matter in the end of 2021 (November 2021, T-755/20). The court first pointed out that the assessment of likelihood of confusion is always a case-by-case examination and all relevant factors must be taken into account. This includes the reputation of the earlier mark and the degree of its distinctive character, either inherent or acquired through use, the CFI explained (see also ECJ, March 2011, Ferrero v OHIM, C-552/09 P).

Moreover, consumers would break down a word sign into word elements – if the word elements had a concrete meaning for them or were similar to words they knew. This would happen even if only one of the word elements has a meaning for the consumer, the CFI stated, referring to case-law (CFI, RESPICUR, T-256/04, EU:T:2007:46, paragraph 57).

E-POWER – understood as ‘electrical energy’

And how is that to be seen in relation to the present case?
The Board of Appeal had found that the element ‘e-power’ would be understood by the relevant public as meaning ‘electrical energy’. It had therefore found that this word element (which was the same in both marks) had only a low degree of distinctiveness, whereas it found the element “vdl” to be distinctive.

The CFI agreed with this analysis. The word element “e-power” would be understood directly in the sense of “electrical energy”. And because of its connection with the goods claimed (in particular vehicles, accessories or parts of vehicles), this element therefore had at most a low degree of distinctiveness.

Wortelement „vdl“ – Identität des Markeninhabers?

Indeed, the word element “vdl” was distinctive on average, the CFI said and explained this. Nissan had argued that VDL was the beginning of the intervener’s company name, corresponding to the identity of the company that owned the mark, and was therefore not distinctive.
But the CFI rejected this argument. A company name can also be used as a trade mark to designate goods or services, the court explained (CFI, La Mer Technology v OHIM – Laboratoires Goëmar [LA MER], T-418/03, not published).

And when analysing a composite mark (such as the mark in dispute), the distinctive and dominant elements appear there as elements of that mark – and not as a reminder of the applicant’s company name, the CFI said.

VDL E-POWER – overall impression

“vdl’ was therefore a distinctive word element – and a decisive one at that. Because in the overall impression created by the conflicting signs, this element has the greatest weight. This, at least, is understandable – since it is also the only difference between the marks VDL E-POWER and E-POWER.

In the end, the CFI dismissed Nissan’s action in its entirety and upheld the decision of the Board of Appeal, which found no likelihood of confusion between the two E-POWER marks.

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