Dehns attorneys Joseph Letang and Alexandra Nott recently helped a longstanding and valued client of the firm, Palatine Hill AS (a Norwegian company specialising in nutritional products), secure registration for a new brand name in the EU.

Background

Historically, Palatine Hill have specialised in Omega-3 products, and their goods are the largest selling Omega-3 oil brand in Germany.  Dehns has worked with Palatine Hill for many years, and this latest matter involved a new brand for the company, this time in the field of animal dietary supplements.

To protect their business interests, Palatine Hill instructed Dehns to prepare and file an EU trade mark application for the sign ‘FOTEN’, covering dietary supplements for animals in Class 5 and animal foodstuffs in Class 31.  This application was filed on 17 December 2021, and was published for opposition purposes on 25 January 2022.

In April 2022, an Opposition was filed on behalf of a French company called LABORATOIRES PHODÉ, based on a likelihood of confusion with their earlier trade mark for ‘PHODÉ’, which covers identical and similar goods in Classes 5 and 31.

Dehns’ Response

A full review of the Notice of Opposition was carried out, and Dehns conducted detailed research into earlier EUIPO decisions.

During that research, Dehns located a case in which the EUIPO had held that there was no likelihood of confusion between the trade marks ‘FYSAL’ and ‘Phycell’, despite the goods (also supplements for animals) being identical.

That earlier case was extremely relevant given that the goods in question were the same as those at issue in the present dispute, and also because those signs had some aural similarity but no visual similarity (on the basis that “the commonality in only two letters, which are not consecutive and therefore not immediately apparent in the signs, does not lead to any degree of visual similarity”).

The findings reached in that case seemed directly applicable to the present dispute, demonstrating the value of researching past decisions when assessing an Opposition.  That earlier case, and others like it, underpinned Dehns’ recommendations to Palatine Hill, and also the arguments that were eventually put forward in reply to the Opposition.

As the goods overlapped, Dehns’ arguments focussed on, firstly, the high degree of attention of the relevant public for veterinary goods (meaning that greater care would be taken during the purchasing process) and, secondly, the visual (and, to a lesser degree, phonetic) differences between the trade marks.

Outcome

In December 2023, the EUIPO issued a decision in which the Opposition was rejected and LABORATOIRES PHODÉ were ordered to pay costs to Palatine Hill.

The EUIPO found no likelihood of confusion due to the lack of visual similarity between the trade marks.  In particular, the EUIPO referred to case law that was cited in Dehns’ arguments regarding the inevitability of trade marks having some letters in common due to the alphabet comprising a limited number of letters.  The EUIPO also held that the minor similarities between the trade marks (in particular, the common sound ‘PHO’ and ‘FO’ at the start of the marks) were insufficient to overcome all of the visual and phonetic differences.

Through thorough research and argumentation, Dehns was able to adopt a robust approach to the dispute and successfully defend the Opposition, ultimately achieving EU trade mark registration for an important brand name.