• Skip to main content
  • Skip to primary sidebar
  • Skip to footer
+49 (0) 69 / 606 278 – 0
[email protected]
Contact form
Patent- & Rechtsanwaltskanzlei

Patent- & Rechtsanwaltskanzlei

  • Deutsch

+49 (0) 69 / 606 278 – 0

  • Facebook
  • Twitter
  • Instagram
  • LinkedIn
  • xing
  • Email
MENUMENU
  • Services
    • Advice On Protective IP Rights
    • Patent Application /TM Registration
    • Enforcement Of IP Rights
    • Defence Against IP Rights Enforcement
    • Costs
  • Company
    • Fields of Law
      • Patent Law
      • Utility Model Law
      • Employees’ Inventions
      • Trademark Law
      • Design Law
      • Trademark and Product Piracy
      • Expert Opinions
    • Our Law Firm
      • Dr. Karl-Hermann Meyer-Dulheuer
      • Dr. Tim Meyer-Dulheuer
      • Dr. Klaus Zimmermann
      • Zhichao Ying
      • Clara Elinor Grünewald
    • Commitment
  • Contact
    • Where To Find Us
    • Write us!
    • Request call back
  • Blog

eSearch plus: EU trademark TOTU – yet TM without a word element

30. July 2020

No likelihood of confusion between the Union trademarks TOTU and TOTTO, the European Court ruled on the EU trademark dispute Figurative marks, both applied for identical goods. It is particularly interesting that the CJEU did not see any word element in the mark in dispute, although this word element TOTU is referred to in eSearch plus.

TOTU vs. TOTTO – Likelihood of confusion?

The dispute on likelihood of confusion arose when Shenzhen Liouyi International Trading Co. Ltd (China) applied for registration of the black and red figurative sign “TOTU” as a Union figurative mark. Essential Export SA (Costa Rica) brought an action against that trade mark registration, alleging likelihood of confusion with its own EU figurative marks containing the word element ‘TOTTO’, which cover identical goods in Nice Class 18, including travel bags and briefcases, suitcases and school bags.

However, the applicant failed, since both the Opposition Division and the Board of Appeal rejected the appeal. According to the applicant, the mark applied for is an abstract and meaningless figurative sign, whereas the earlier marks are perceived as figurative representations of the word ‘totto’. A phonetic or conceptual comparison is not possible. There is therefore no likelihood of confusion.

EU Bildmarke TOTU
left: disputed EU mark  TOTU      right: earlier EU figurative marks TOTTO

Arguments in favour of the word element TOTU

Essential Export SA appealed against this decision to the European Court of Justice (CJEU), which has now ruled in this case. The mark applied for contains the word element ‘TOTU’, which is clearly indicated by the capital letters ‘T’, ‘O’, ‘T’ and ‘U’ formed by the lines and dots of the mark.

Above all, the applicant considered that it was confirmed by the fact that that word element TOTU is referred to in databases managed by EUIPO, such as eSearch plus or TMview. This is because these databases contain the information provided by the trade mark applicant in the applications. Obviously, Shenzhen Liouyi International Trading Co.Ltd itself saw and named the word element TOTU in its trademark.

Perception of the trademark applicant is not relevant

The CJEUnevertheless dismissed the action (EU:T:2020:312). A trade mark must be compared as it is registered or listed in the application for registration and not as it is used by the trade mark proprietors or listed in the database, the CJEU emphasised.

The envisaged possibility for the applicant for an EU trade mark to attach a description of the trade mark to the application provides information on the perception of the trade mark by the trade mark applicant, but in no way on the perception of the relevant public. The latter, however, is the relevant factor in the assessment of likelihood of confusion. And the relevant public would not recognise the word element ‘totu’ in the mark applied for, the Court held. The red dots would be perceived as separating elements rather than as a complement to the black elements of the capital letters TOTU.

Such a perception of that mark by the public is all the more likely because the term TOTU has no obvious meaning in relation to the goods in question. That is all the more true since, according to general case-law, the average consumer normally perceives a mark as a whole. It is only if they are able, on the occasion of the perception of a word sign, to decompose it into word elements which suggest a particular meaning to them or which resemble the words or terms with which they are familiar that those details of a mark must be regarded as relevant to consumers. As an example, the court cited the EU trademark Simply.Connected of Robert Bosch GmbH – we reported on this.

Word element TOTU in eSearch plus and TMview

The fact that reference is made to that word element TOTU in databases managed by EUIPO, such as eSearch plus or TMview, is also an ineffective argument put forward by the applicant Essential Export SA, the Court added. According to Essential Export SA, the inclusion of the information contained in the applications in those databases only provides information about the perception of the marks applied for by the applicant for the trade mark, and in no way about the perception of the marks by the relevant public.

The CJEU therefore dismissed the action in its entirety and upheld the decision of the Board of Appeal. There is no likelihood of confusion between the EU figurative mark applied for.

Do you also want to protect or defend your trademark?

Our lawyers will be pleased to advise you. Please contact us if you are interested – we look forward to your call!

 

Sources :

Judgement of CJEU, EU:T:2020:312

Image:

TheDigitalArtist | pixabay.com | CCO License

  • share  
  • share 
  • share 
  • tweet  
  • share 

Category iconTrademark Law Tag iconlikelihood of confusion,  Union figurative mark,  similarity,  trademark search,  word element,  word and figurative marks,  EU figurative marks,  word element TOTU,  word element without meaning,  judgment. ECJ,  EUIPO databases,  TOTU,  Totto,  TOTU vs. TOTTO,  eSearch plus,  TMview

Reader Interactions

Leave a Reply Cancel reply

Your email address will not be published. Required fields are marked *

Primary Sidebar

More articles about: Trademark Law

All articles

Blog Menu

  • Design Law
  • Healthcare & Lifesciences
  • International Intellectual Property
  • Licenses
  • News from our law firm
  • Overall
  • Patent Law
  • Product- and Trademark piracy
  • Trademark Law
This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

Recent Posts

  • Action against a patent already expired 26. February 2021
  • Design protection in China: Amendment 2021 25. February 2021
  • EPO practice of national patent offices – more uniform 18. February 2021
  • BGH: Black Forest ham – not only packaged in the Black Forest 16. February 2021

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Das könnte Sie auch interessieren:

16. February 2021
BGH: Black Forest ham – not only packaged in the Black Forest

BGH: Black Forest ham – not only packaged in the Black Forest

16. February 2021
UK trademark after Brexit: earlier UK trademark in opposition

UK trademark after Brexit: earlier UK trademark in opposition

11. February 2021
EU figurative marks: Panthé figurative mark – a panther mark?

EU figurative marks: Panthé figurative mark – a panther mark?

9. February 2021
BGH ruling: Classe E versus German E-Klasse

BGH ruling: Classe E versus German E-Klasse

4. February 2021
Protecting domain names as trademarks

Protecting domain names as trademarks

1. February 2021
UK ruling: Parallel Trademarks in Amazon Sales

UK ruling: Parallel Trademarks in Amazon Sales

Footer

Contact

Franklinstr. 61-63
D-60486 Frankfurt am Main
Germany

+49 (0) 69 / 606 278 – 0
+49 (0) 69 / 606 278 – 199
[email protected]

Customer Reviews

Meyer-Dulheuer MD Legal Patentanwälte PartG mbB Patentrecht, Markenrecht, Eigentum hat 4,78 von 5 Sternen 23 Bewertungen auf ProvenExpert.com

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Law Firm

  • Request non-binding call back
  • Info secure emails
  • Company
  • Our Law Firm
  • ISO Certificate
  • Privacy Policy
  • Data handling for clients
  • Imprint

Follow Us

  • Facebook
  • Twitter
  • Google+
  • LinkedIn
  • xing
  • Email

Newsletter Signup

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

© Patent- & Rechtsanwaltskanzlei Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Kontaktformular

 

Rufen Sie uns an, schicken Sie uns eine Mail oder füllen Sie das Kontaktformular aus.

+49 (0) 69 / 606 278 – 0
[email protected]

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

Contact Form

 

Give us a call, send us an email or fill out the contact form.

+49 (0) 69 / 606 278 – 0
[email protected]

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form