EU trade mark disputes: Sanitix v SANYTOL

On 3 July, in case T‑358/23, the General Court of the European Union decided on a dispute between the EU trade mark "Sanitix" and the earlier European trade marks "SANYTOL".

In 2020, the London-based company Sanitix applied to the European Union Intellectual Property Office (EUIPO) to register the sign "Sanitix" as an EU word trade mark for cleaning products related to hygiene and disinfection in Classes 3 and 5 of the Nice Classification. However, the Spanish company AC Marca Brands opposed the registration based on four earlier trade marks, including the European trade marks N 6383161 and N 12175361 and its international word trade mark N 604620, containing the sign "SANYTOL" and covering hygiene and disinfection products in Classes 3 and 5. It also relied on its Spanish word mark N. M 3 687 558, SANYTOL, LA HIGIENE QUE CAMBIA LAS NORMAS.

The Opposition Division and the Board of Appeal of the EUIPO rejected the opposition on the grounds that there was no likelihood of confusion between the marks at issue. They considered that, even though the goods were identical, there was no likelihood of confusion due to the low degree of visual, phonetic and conceptual similarity between the marks. Furthermore, the Board noted that the earlier marks had some reputation, but not enough to justify consumer confusion.

AC Marca Brands appealed the EUIPO decision to the General Court of the European Union, which had to decide whether there was a likelihood of confusion between the marks at issue.

First, the Court held that the Board of Appeal had underestimated the similarity between "Sanitix" and "SANYTOL". The Board of Appeal had argued that the differences in the endings ('ix' versus 'ol') were significant and that the initial elements of the two signs ('sanit' and 'sanyt') had a low degree of distinctiveness, thus justifying the lack of likelihood of confusion. However, the Court considered the similarities in the initial elements 'sanit' and 'sanyt', which refer to hygiene, relevant and should be considered as a whole. Thus, the Court held that there was a medium degree of visual, phonetic, and conceptual similarity, contrary to the  Board of Appeal's assessment of a low degree of similarity.

In addition, the Court pointed out that the distinctiveness resulting from the use of the earlier SANYTOL marks, which were well known in Spain, France and, to a lesser extent, in the European Union, increases the likelihood of confusion. Therefore, applying the principle of interdependence, according to which different factors may counterbalance each other, and taking into account the medium degree of visual, phonetic and conceptual similarity, the General Court held that, despite the high level of consumer attention, the likelihood of confusion could not be ruled out. As a result, the decision of the Board of Appeal was annulled.