Ex officio review of relevant grounds for trade mark refusal: a Greek example of caring too much?

The blogger's understanding is that most EU jurisdictions, as well as the OHIM, are not very sympathetic to the "crowded field" argument, when assessing confusing similarity of trade marks. This seems particularly true in cases where the TM Office does not conduct a check on relevant grounds for refusal and leaves it up to possibly interested parties to settle their disputes in opposition proceedings. On the other hand, the Greek TM Office reviews applications on relevant grounds and is generally rather receptive to an appropriately crafted crowded field argument.

In this instance, the Greek TM Office rejected this trade mark application, filed in connection with heating installations and relevant apparatus in Class 11. The rejection was based on likelihood of confusion with two prior CTMs for "SUNRAY" (word) in classes 9 and 11. The two prior identical marks belonged to two different entities, which do not seem to have bothered one another over this, most likely as the earlier SUNRAY CTM was filed n connection with apparatus and parts for swimming pools, whereas the later SUNRAY CTM designates various types of lamps and devices for controlling the brightness and temperature of lamps and heaters in aquariums and terrariums. 

The "liquid coincidence" (aquarium - swimming pool) between the earlier CTMs was probably not enough to spur controversy. On the other hand, the Greek Office considered all relevant goods "identical" (not similar) and rejected the application. The applicant did not file any observations to the initial refusal, but can still file a recourse action against the Office's decision.

Reviewing relevant grounds of refusal

"SUNRAY" is not entirely uncommon for class 9 and 11 goods, though, in terms of signs similarity, it would have little importance, in view of the significant similarity of the marks involved. On the other hand, it is hard to agree that heating installations are identical with lamps and/or swimming pool filters. Moreover, when an applicant is faced with a provisional refusal where such goods are considered "identical", it would be hard for him to imagine how an appropriate restriction would get him out of harm's way.


Perhaps, this is a case of where the Greek TM Office was overly diligent. The problem may be that there are cases where it is not as diligent as it should be.