Background
The proprietor of the EU word mark “ECOVER” (inter alia in Classes 3, 5 and 16) filed an opposition against an EU tradtrade mark application. The Opposition Division rejected the opposition and the Board of Appeal confirmed that decision (ecovie/ECOVER).
Decision
The General Court annulled the decision of the Board of Appeal. While consumers associate “eco” with “ecological/ecology” and it is therefore descriptive, a descriptive element may still be taken into account in the overall comparison where, due to its length and position at the beginning of the mark, it attracts the attention of the relevant public.
In the case at hand, the signs coincide in the first three letters “eco”; differences in the subsequent elements did not eliminate the resulting similarity. Importantly, not only was the descriptive element identical, but the remaining parts (“vie” and “ver”) were also similar. This led the Court to find an average degree of visual similarity.
The Court also found an average degree of phonetic similarity: coincidence in “eco”, identical word length, and the fact that the following syllable in both signs begins with “v”, which part of the public pronounces in the same way.
As regards distinctiveness: the prefix “eco” is descriptive and lacks distinctiveness, whereas the ending “ver” is distinctive. Overall, the Court assessed the inherent distinctiveness of the earlier mark as average. On that basis, the conclusion that there was no likelihood of confusion could not stand.
Practical note
The decision reinforces that descriptive or weakly distinctive elements generally form part of the comparison of signs—particularly where they appear in a prominent position (e.g., at the beginning) and where the remaining elements also show similarities.
The General Court’s detailed reasoning does not mean that future trade marks must avoid using the element “Eco” as a matter of principle. The decisive question is rather whether the sign derives its distinctive character from additional inherently distinctive verbal elements, or from the combination with distinctive figurative features. The General Court’s judgments thus reiterate a familiar point: assessment ultimately turns on the mark’s overall impression.
Over the coming years, environmental and sustainability marketing will come under even closer scrutiny—and will accordingly carry greater legal risk. With the Empowering Consumers for the Green Transition Directive (EmpCo Directive) (EU) 2024/825 and the proposed Green Claims Directive, the EU is significantly tightening the compliance framework for businesses. Broad environmental assertions, sustainability labels, and, in particular, product-specific claims such as “climate neutral” will in future be permissible only subject to stringent substantiation, documentation and, in some cases, certification requirements. Even now, practice shows that the EUIPO and the courts apply exacting standards when examining the distinctiveness of “green” trade marks.
Businesses that use sustainability as part of their brand messaging should therefore build in robust legal review at an early stage. For proprietors of such marks, it is advisable to adopt a resilient trade mark strategy from the outset—one that takes account of current case law as well as forthcoming EU rules—since the tightened requirements may also affect marks that are already registered.
To the point
- Descriptive elements are not automatically disregarded—position and length can make them relevant to the overall impression.
- If further elements are also similar, the overall similarity may be assessed as average.
- Visual and phonetic similarity may be found even where the common beginning is descriptive.
- The (inherent) distinctiveness of the earlier mark is central to assessing likelihood of confusion and may be “average” overall.
- Practically relevant for branding using “eco”, “bio”, “green” & similar terms: conflict risks should be assessed holistically.
Please get in touch – we will support you in structuring your “green” positioning in a legally compliant manner and in asserting it reliably in the marketplace.
Source: Infocuria, Infocuria