Court finds clear difference
“Sol” marks were sufficiently distinct, says Emmy Hunt. T-159/17, Claro Sol Cleaning, SLU v EUIPO and Solemo Oy, General Court, 8th March 2018
T-159/17, Claro Sol Cleaning, SLU v EUIPO and Solemo Oy, General Court, 8th March 2018
Key point
- Reviewing the dominant and distinctive aspects of the marks, the GC found sufficient difference between a composite logo mark featuring “Claro Sol” and an earlier Finnish logo featuring “Sol” to avoid a likelihood of confusion
This decision concerns an application by Claro Sol Cleaning, SLU for the EU trade mark shown below right (bottom) for services in classes 35, 37 and 39. Solemo Oy opposed the application on the basis of its prior Finnish registration for the figurative mark also shown below right (top) covering services in classes 35, 37 and 39.
Case history
The Opposition Division found the marks insufficiently similar to permit a successful opposition under Article 8(1)(b) of the EU Trade Mark Regulation, despite the identity/close similarity of the majority of the specified services. There was a low degree of visual similarity, limited phonetic similarity and no conceptual similarity (as the word “sol” did not convey any meaning in Finnish). The level of attention of the relevant public was average to high.
The Board of Appeal (BoA) partially annulled the Opposition Division’s decision, finding a likelihood of confusion among the Finnish public. It agreed that the level of attention of the public was average to high, but found that consumers would view the elements “Claro” and “Sol” as dominant. Consequently, the opposition was successful in relation to all of the services found to be identical or similar.
GC decision
The Applicant argued that the BoA’s assessment of similarity was incorrect. In particular, the BoA had not properly taken into account the relevant public when determining whether a likelihood of confusion existed. Re-examining the issue, the General Court (GC) found that:
- “Claro Sol” was not dominant within the mark applied for, which also included several other elements and figurative aspects. “Claro” and “Sol” visually stood out from the mark and were more likely to be noticed. The words “desde 1972” would not be understood in Finland (and were not negligible), and the distinctive figurative aspects of the mark were viewed equally, and were different to the figurative aspects of the prior mark. It was necessary to take into account the overall impression of the marks, rather than individual features.
- Visually, the common elements “sol”, the colour red and the graphical lines were insufficient to create similarity. In the context of the overall impression, these were offset by the visual differences.
- The phonetic similarity of the marks was limited, because the application included multiple phonetic elements. “Desde 1972” was a relevant part of the overall impression of the mark applied for. The element “Facility Services” was found to be insignificant, because, as English words, they would be widely understood in Finland.
- The parties acknowledged some conceptual similarity between the marks, as “sol” is Swedish for “sun” and would be widely understood in Finland (Swedish is an official language). However, the other elements of the mark (such as the musical note) lessened the conceptual similarity overall.
Entirety concept emphasised
The GC found that there was no likelihood of confusion between the marks, despite the similarity between the services. The decision emphasises that marks must be viewed and compared in their entirety, and that careful thought should be given to the local language(s) of the relevant public in different parts of the EU as required under the earlier rights relied upon.
Emmy Hunt is a Managing Associate at Mishcon de Reya LLP