Home » Trade Marks » Could CALDEA cause confusion? Case Review

Could CALDEA cause confusion? Case Review

Keltie LLP

K2 IP Limited

About IPcopy

IPcopy is an intellectual property related news site covering a wide variety of IP related news and issues. We will also take the odd lighthearted look at IP. Feel free to contact us via the details on the About Us page.

Disclaimer: Unless stated otherwise, the contributors to IPcopy (the "IPcopy writers") are patent and trade mark attorneys or patent and trade mark assistants at Keltie LLP or are network attorneys at K2 IP Limited. Guest contributors will be identified.

This news site is the personal site of the contributors and is not edited by the authors' employer in any way. From time to time however IPcopy may publish practice notes, legal updates and marketing news from Keltie LLP or K2 IP Limited. Any such posts will be clearly marked.

This news site is for information purposes only. Information posted to this news site is not legal advice and should not be taken as such. If you require IP related legal advice please contact your legal representative.

For the avoidance of doubt Keltie LLP and K2 IP Limited have no liability as to the content of IPcopy and any related tweets or social media posts.

Privacy Policy

IPcopy’s Privacy Policy can be viewed here.

CJEUIn this case review, which was first published in the June issue of the ITMA review, we look at case T-26/13 (dm-drogerie markt GmbH & Co KG v OHIM, CJEU, General Court (Third Chamber), 12 February 2014) and the assessment of likelihood of confusion between the trade marks CALDEA and BALEA.

On 22 July 2010, Semtee filed a Community Trade Mark application for the word mark CALDEA for, inter alia, “soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices” (class 3), “consultancy relating to business management of leisure premises, non-medical, making use of water, in particular heated water, for relaxation, leisure, physical maintenance of and keeping fit in the field of health” (class 35) and “personalised consultancy, advice and assistance relating to the operation of a leisure centre, non-medical, relating to water, in particular heated water, for relaxation, leisure, physical maintenance and keeping fit in the field of health” (class 44).

The application was published on 20 September 2010 and dm-drogerie markt GmbH & Co KG (“dm-drogerie”) filed a notice of opposition against registration of the mark for the above-mentioned goods and services based on its earlier international trade mark No 0894004, BALEA, in classes 3, 5 and 8 (covering, inter alia, “soaps, perfumeries, essential oils, preparations for hygienic and beauty use”) designating protection in the European Union (EU). The Applicant claimed infringement under Article 8(1)(b) of Council Regulation (EC) No 207/2009.

The Opposition Division rejected the opposition and dm-drogerie filed a notice of appeal with OHIM against the decision.

The appeal

The First Board of Appeal of OHIM (the Board) assessed the likelihood of confusion, bearing in mind the likelihood of association between the marks, to ascertain whether the application should proceed to registration.

The Board considered the average consumers in all European Member States, who were judged to be reasonably well informed and reasonably observant and circumspect. In accordance with settled case law, the Board assessed the marks as a whole, taking into account the visual, phonetic and conceptual aspects, considering their distinctive and dominant elements.


While there may exist some visual similarities on account of the coincidence of the two-letter sequences, _AL and _EA, in the marks, there are sufficient differences between the marks
when perceived as whole.

Phonetically, the Board found that the marks had a low degree of similarity, irrespective of the fact that they contained the same number of syllables and sequence of vowels.

The marks were not conceptually similar as the mark applied for has no meaning and the earlier mark has a meaning of which only a small population of the EU is aware.

Overall, the marks were visually and conceptually dissimilar and had a low degree of phonetic similarity. The Board held that the average consumer will pay more attention to the visual perceptions of the signs. Further, the degree of phonetic similarity should not be given much weight unless contact between the goods of interest and the public is established by means of sound. As a consequence, the marks were dissimilar when considered in their entirety.

This appeal was dismissed as a likelihood of confusion did not exist, even for the identical goods in class 3. The decision was not affected by the alleged reputation of the earlier mark, particularly in Germany, nor was such evidence assessed as the signs had been found to be dissimilar overall.

While this decision is, perhaps, unsurprising, it provides a useful example of the straightforward application of settled case law concerning the assessment of a likelihood of confusion.

Eleni Mezulanik  9 June 2014


Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s

This site uses Akismet to reduce spam. Learn how your comment data is processed.

%d bloggers like this: