“Powder candle” held to be descriptive for Class 4 goods
- Abel Group opposed the figurative mark VIVIN POWDER CANDLE based on the earlier figurative mark POWDER CANDLE
- The Board of Appeal found that there was no likelihood of confusion, even though the goods were identical
- The fact that the marks shared the word combination ‘powder candle’ was insufficient to find that they were confusingly similar
In a decision dated 17 July 2023 (Case 1976-o), the Estonian Board of Appeal has dismissed Abel Group OÜ’s opposition against the registration by Senses OÜ of the figurative trademark VIVIN POWDER CANDLE in Class 4 (EE Application M202000426):
The opposition was dismissed on the grounds that there was no likelihood of confusion with the earlier trademark depicted below (EUTM on which IA is based No 018123431) in Class 4:
Arguments of the parties
Abel Group argued that the figurative trademarks VIVIN POWDER CANDLE and POWDER CANDLE were visually, phonetically and conceptually similar due to the identical word combination ‘powder candle’. The goods covered by the trademarks were identical. The opponent considered that its trademark, including the word element ‘powder candle’, had a normal degree of distinctiveness. The most dominant and distinctive element of the earlier trademark was the mark as a whole, with the product name ‘Powder Candle’ in large letters as a central feature of the mark. The opponent also stated that its trademark had been used only by itself and, therefore, consumers associated the mark POWDER CANDLE solely with the opponent.
Abel Group contended that the application should be refused under Article 10(1)(2) of the Estonian Trademark Act, because the mark VIVIN POWDER CANDLE was highly similar to the earlier mark POWDER CANDLE and covered identical goods. Therefore, there was a likelihood of confusion.
In response to the opposition, Senses argued that the word combination ‘powder candle’ had lost its distinctive character and had a descriptive meaning, arguing that several companies were using trademarks containing the word combination ‘powder candle’. Senses concluded that the trademarks at issue were not visually and phonetically similar due to the presence of the distinctive word ‘Vivin’ in the mark applied for.
Senses further argued that the opponent should not be allowed to monopolize the word combination ‘powder candle’, and that such combination should be kept free for use by others due to its descriptive character. Senses pointed out that Abel Group had not filed evidence from which one could conclude that the trademark POWDER CANDLE was well known and did not refer generally to a type of candles.
Decision
The Board of Appeal dismissed the opposition, finding that the trademarks at issue were dissimilar. In particular, the board found that the fact that the marks shared the word combination ‘powder candle’ – which is not distinctive – was insufficient to find that they were confusingly similar. The word combination ‘powder candle’ had a descriptive meaning indicating a particular type of candles.
Anneli Kapp, Patendibüroo KÄOSAAR
This article first appeared in WTR Daily, part of World Trademark Review, in February/2023. For further information, please go to www.worldtrademarkreview.com.
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