Eco friendly trademarks
This ruling by the General Court of the European Union clarifies the standards for assessing the likelihood of confusion between trademarks that share common descriptive elements, specifically the element “ECO”. For businesses operating in the sustainability sector, understanding this decision is crucial for protecting their brand identity.
Trade mark infringement test
Firstly, the court considers the trade mark infringement test.
Article 8(1)(b) of the EU Trade Mark regulation provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
The court formulates the trade mark infringement test criteria, as follows:
“According to settled case-law, a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C39/97, EU:C:1998:442, paragraph 17, and of 17 April 2008, Ferrero Deutschland v OHIM, C108/07 P, not published, EU:C:2008:234, paragraph 45).”
Confusingly similar (ECOVER v. ECOVIE)?
The case involves the legal proceedings in a trade mark case, between People Against Dirty Holdings Ltd, the company behind the eco-friendly brand ECOVER, and a party which applied to register the trademark "ECOVIE”. Grounds for the opposition was that ECOVIE would create likelihood of confusion with the pre-existing ECOVER trademark.
In its decision, the General Court assesses multiple factors for trade mark protection, including:
- Visual Similarity: Both marks began with "ECO," a commonly used prefix in sustainability-related branding, followed by elements with similar structures (“VER” v. “VIE”). Since the endings ‘vie’ and ‘ver’ of the signs at issue are similar because they begin with the letter ‘v’ and have two of their three letters in common.
- Phonetic Similarity: "ECOVER" and "ECOVIE" share similar syllabic patterns and pronunciation. Eco is pronounced the same way and although the general public will not pronounce the endings ‘vie’ and ‘ver’ in the same way, the exception of the consonant ‘v’ at the beginnings of these endings.
- Conceptual Similarity: Both marks reference ecological themes. The court determines that the prefix ‘eco’ in the earlier mark ECOVER will be perceived by the general public as being descriptive as regards the ecological character of the goods at issue, with the result that that prefix is devoid of distinctive character. The ending ‘ver’ of the earlier mark has distinctive character.
So despite the fact that the prefix ‘eco’ of the signs at issue is descriptive, it must nevertheless be taken into account in assessing the visual, phonetic and conceptual similarity of those signs. All this, whilst ‘ver’ and ‘vie’ have no specific meaning.
Having regard to the identical length and characteristics of the prefix and said ending, according to the court “it must be held that that ending enhances the inherent distinctive character of that mark beyond the minimum which it necessarily enjoys by virtue of its registration.”
Similar goods and services
The court assumes that the goods at issue were identical. According the court, the consideration that there was only a low degree of similarity between ECOVER and ECOVIE is incorrect. It found that the inherent distinctive character of the earlier mark had to be regarded as average and not as weak.
This leads to trade mark protection of ECOVER and in the People Against Dirty Holdings Ltd in winning this case.
Ecofriendly brand protection
What can ecofriendly business learn from this trade mark case? Particularly, also in the context of trademark law protection, the legal test of likelihood of confusion applies to trade marks having a descriptive element consumers.
Moreover, trademark distinctiveness matters. What is clear from the decision is that even when the common descriptive term like "ECO" is present, the distinctiveness of the overall mark remains a critical factor. Courts will assess visual, phonetic, and conceptual similarities in their entirety, rather than focusing on isolated elements. This will help businesses in protecting their established brands.
An assessment must be made based on the entire trade marks due to their structural resemblance. In doing so, the court reaffirms that a holistic approach – of the trademark infringement test – is necessary.
Finally, this decision may also have impact on trademark availability searches and brand protection. Given the prevalence of terms like "eco," businesses should conduct comprehensive trademark research before adopting new brand names. Companies with long-standing ‘ecofriendly’ trademarks should also actively monitor new applications and scrutiny enforcement of their trade marks.
Conclusion
The ECOVER decision highlights the evolving landscape of trademark law and its impact on brand protection. This decision is particularly relevant for businesses in the eco-conscious sector.
If you’re navigating trademark challenges, consulting with our experienced trademark team can help safeguard your brand’s identity and market position.
