Signs differ in their strongly distinctive elements
An EU trade mark application
beansprucht sought protection for hygiene and disinfection goods in Classes 5 and 10. In 2021, the owner of the EU trade mark 
filed an opposition at the EUIPO, relying on a mark that is protected, among others, for hygiene and disinfection goods in Classes 3 and 5. The EUIPO and its Board of Appeal rejected the opposition. Despite the identity of the goods and the undisputed reputation of SANYTOL for disinfectants in Class 5, they found no likelihood of confusion. According to those bodies, the signs differ in their figurative elements and coincide only in the weak beginnings “sanyt”/“sanit,” which are considered weakly distinctive because of the reference to the English term “sanitary.” As a result, the different, strongly distinctive endings “eb” and “ol”—particularly in terms of conceptual meaning, since “eb” has no meaning—predominate in the comparison. The owner of SANYTOL appealed to the General Court to have the Board of Appeal’s decision set aside.
General Court: No artificial splitting of the Marks
The General Court found in favor of the applicant and overturned the Board of Appeal’s decision. A significant part of the relevant public would not split the marks into “sanyt”/“sanit” and “ol”/“eb.” This division neither corresponds to normal syllabic separation nor does the graphic design of the marks warrant such a split. Consequently, consumers do not focus primarily on “ol” or “eb” when comparing the signs.
Similarity of the signs also from a conceptual standpoint
Viewed as a whole, “SANYTOL” and “SANITEB” are more similar in word and figurative form than the EUIPO assumed. This also applies to conceptual similarity, because “sanyt” and “sanit” evoke the idea of “sanitary.” The General Court noted that, according to case law, conceptual similarity can arise where the same idea or concept is conveyed.
Overall assessment must take into account the reputation of the Mark
At the next stage of the likelihood-of-confusion analysis, it must be remembered that the similar initial parts “sanyt” and “sanit” are weak in distinctive character. In the context of the overall assessment, the enhanced distinctiveness of SANYTOL, resulting from its reputation, carries significant weight. A likelihood of confusion cannot be ruled out.
To the point
This decision demonstrates that a likelihood of confusion may, under certain circumstances, be established even where only weakly distinctive elements are similar. Here, SANYTOL’s reputation proved decisive. Moreover, the General Court reaffirmed its established principle that a mark should be dissected into separate components only if certain parts have a clear meaning, and/or if syllabic division or figurative elements naturally lead to such segmentation.
Source:
InfoCuria Case-law