On October 27, 2016, the Polish company SFD S.A., engaged in the trade of nutrients, dietary supplements, and dietary foods, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office. Registration as a mark was sought for the figurative sign(EUTM 015971435).  The goods and services in respect of which registration was sought were in, inter alia, Classes 5, 30, 32, and 35.

On February 14, 2017, ALLMAX NUTRITION filed a notice of opposition to the registration of the trade mark applied for on the basis of the earlier EU word marks ALLMAX NUTRITION (EUTM 9570623 registered in classes 35 and 44 and EUTM 11977601 registered in classes 29, 30 and 32).

EUIPO found the opposition justified. The SFD appealed to the Board of Appeal, which supported EUIPO’s position, and then the CJEU did the same.

In the present case, the CJEU confirms the prevailing position of the dominant nature of the word layer of the mark in jurisprudence. The CJEU pointed out that where a trademark consists of phonetic and figurative elements, the former are, in principle, more distinctive than the latter, as the average consumer will more easily refer to the goods in question by quoting the name than by describing the figurative element of the trade mark. According to the CJEU, in the present case, the figurative element cannot be regarded as particularly distinctive in itself, but it is not irrelevant to the overall impression conveyed by the sign applied. It was also found that the second part of the SFD mark, the word element 'designed for motivation’, plays a much smaller role than the word element 'allnutrition’ in the overall impression conveyed by the sign applied for.

The CJEU found that the opposing characters are moderately similar on the phonetic and visual levels and highly similar on the conceptual level. The goods and services of the compared marks were also considered similar. This level of similarity was sufficient to recognize the risk of confusion and thus to dismiss the SFD’s complaint.

What is interesting, in February 2016, the SFD applied for the registration of an identical designation in the EUIPO for the same goods and services (EUTM 015070791). This application was not opposed by ALLMAX NUTRITION, despite the fact that their trademark was filed much earlier – in 2013. Perhaps soon the SFD trademark will receive an application for a declaration of invalidity from ALLMAX NUTRITION on the basis of the above-mentioned earlier rights.