IDS SpA (Applicant) filed an EU trade mark application for AQUAPRINT for various products for use in dentistry (the Application). This was opposed by Dentsply De Trey GmbH (the Opponent) based on various earlier EU national rights for AQUACEM (the Earlier Rights) as well as passing-off based on unregistered rights in the UK.

The opposition was dismissed by both the Opposition Division and the Board of Appeal. This dismissal was then upheld by the General Court.

The marks

It was held that "aqua" is of weak distinctive character as it alludes to the characteristic that it can be used with water, either in the mouth of a patient or a laboratory environment.

The element "print" is not highly distinctive in respect of the goods applied for, because these goods are used in the context of dental impressions. The element "cem" was held to be a made up word.

The Opponent tried to argue that cem was short for cement (presumably the kind used by dentists) but this argument was not substantiated by any evidence and was rejected.

Level of similarity

Despite sharing the same first word, which is considered the most important part of the mark, the General Court upheld the decision that the marks shared only a low level of visual and aural similarity. This is due to the weak nature of aqua and the complete visual and aural differences between cem and print.

The General Court did disagree that the conceptual differences were as different as held in the Board of Appeal but still found the lack of conceptual similarity meant the marks were only of low level similarity.

Accepted principles were relied upon, such as:

  • consumers normally perceiving a mark as a whole and not proceeding to analyse its various details
  • consumers identifying the elements which, to them, suggest a concrete meaning or resemble words known to them.

Hence, print will have more of an impact as a word with meaning rather than cem which has no meaning.

The General Court held overall that there was no overall dominant element in either of the marks. The fact that aqua was held to be so weak played a major part in the decision that the marks were not considered more similar.

Likelihood of confusion

Despite the partially identical goods covered by both marks, the Board of Appeal held there was no risk that the relevant public, dentists, would believe that the goods came from the same undertaking or from economically linked undertakings because the weak degree of visual and audio similarity was offset by the conceptual differences.

Passing off

Here, there are three criteria to satisfy:

  • the goodwill acquired by the sign at issue
  • misrepresentation by the proprietor of the subsequent mark
  • damage caused to that goodwill.

The Board of Appeal held that the Opponent had failed to show the Applicant had misrepresented their goods. This was upheld by the General Court. The goods are targeted at trained and educated specialists in the dental field displaying a high level of attention at the time of their purchase.

It is unlikely that a large number of these specialists will be led to purchase a product of the Applicant mistaking it for a product of the Opponent.

Conclusion

The Opponent was unsuccessful both in their opposition and passing off case and this decision was upheld by both the Board of Appeal and General Court.

Case Ref: T-312/18