On May 21, 2014, the EU General Court, in its judgment (T-599/11), dismissed the action brought by the applicant for the word mark ‘ENI’ Co. Ltd, for goods and services for annulment of Decision R 2439/2010-1 of the First Board of Appeal of the Office for Harmonisation in the Internal Market (OHIM) of 8 September 2011 dismissing the appeal against the decision of the Opposition Division refusing in part registration of that mark in the opposition filed by the proprietor of the Community word and figurative marks containing the word element ‘EMI’.
The EU General Court ruled inter alia that in view of the visual and phonetic similarities between the signs at issue and having regard to the fact that the service covered by the earlier mark, on the one hand, and the goods covered by the mark applied for, on the other, are also similar, the Board of Appeal did not err in finding that there was a likelihood of confusion between them. Consequently, the Board of Appeal was right in upholding the decision of the Opposition Division refusing registration of the mark applied for in respect of clothing, footwear and headgear in Class 25.
The EU General Court, in particular, pointed out that 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 the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa.