And the EU General Court saves the day: Sumol + Compal receive finding in their favour

Sumol + Compal (a food and drinks company) welcome in the recent decision of the EU General Court. The EU Court annulled the decision made by the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO), which stated that there was no likelihood of confusion between its earlier EU marks and that of Ludwig Manfred Jacobs’ mark.

Background information

Sumol + Compal opposed an EU mark filed by the nutrition expert Ludwig Manfred Jacobs. Ludwig Manfred Jacobs had applied to register the figurative mark ‘Dr Jacob’s essentials’ in the classes 5 (pharmaceuticals, medical and veterinary preparations), 29 (foodstuffs (meat, fish, fruit, vegetables, eggs and dairy products), 30 (foodstuffs (coffee, tea, flour, bread, sugar and confectionary)) and 32 (beers and non-alcoholic drinks)). Ludwig Manfred Jacobs’ mark incorporated the colours orange, red and green.

In June 2015, Sumol + Compal filed a notice of opposition to the EU registration regarding four of its earlier marks, which covered goods also in classes 5, 29 and 32. One of Sumol + Compal’s mark reads ‘compal essencial’ with the word ‘compal’ written in orange (number 970169). Sumol + Compal also owned another black and white mark that reads ‘compal essencial’ (number 530005).  Furthermore, Compal’s fourth mark (number 530007) is presented on a jar with the words ‘Compal’ and ‘essencial’. It also incorporates the colours of red, green and orange.

The subsequent findings

Initially, the EU Opposition Division decided that there was no likelihood of confusion between Sumol + Compal’s EU marks and that of Ludwing Manfred Jacobs’ applied-for mark.

In November 2016, Sumol + Compal appealed against the above decision, but the decision was upheld by the Fifth Board of Appeal of the EUIPO.

Undeterred, Sumol + Compal made an appeal to the General Court and argued that the similarities between its earlier marks was non-exhaustive. As a result, the Fifth Board of Appeal of the EUIPO had failed to consider the colours in its earlier marks with that of Ludwig Manfred Jacobs’ mark.

The General Court found in favour of Sumol + Compal, as the court felt that both the EUIPO and the Opposition Division had failed to compare the colours in the earlier marks with the applied-for mark by Ludwig Manfred Jacob.

The Court held that the colours of the signs were “constituent elements which must be taken into account”.  In addition, the court held that the EUIPO’s assessment that the colour did not influence the phonetic or conceptual comparison of the mark, and that the colour of the mark was not of primary importance was not relevant.

Sumol + Compal received costs from the EUIPO.