TOTAHVL GAS held not to be confusingly similar to TOTALGAZ

On January 19, 2016 Total SA filed an opposition against the word mark TOTAHVL GAS in Class 06 for “Containers of metal for gas transport” and Class 39 for “Services for Gas transportation” on the grounds of various earlier marks containing the word element TOTAL for highly similar goods, among others, under Article 74.2(e) of the IP Law.

The Trademark Office (TMO) rejected Total’s opposition on the basis that there was no likelihood of confusion between the compared signs.  

In comparing the signs, the TMO held that “TOTAHVL GAS” comprised of two parts, “TOTAHVL” is 7 characters and “GAS” is 3 characters, where the cited mark “TOTALGAZ” is 8 characters. Though both of the marks at issue shared the common element “TOTA”, the purchasing public was readily distinguish between the marks as to the length and appearance. In addition, the public would perceive the marks in their entireties rather than meticulously dissect them into their constituent components. The TMO agreed with the applicant’s views that the protected element “TOTAL” is a meaningful descriptive element, which narrows the scope of protection than other inherently distinctive marks. Furthermore, the element “HVL” in the applied-for mark was registered under Registration no. 225465 for “SheHVL gas”. Thus, when combining with “TOTA”, the applied-for mark “TOTAHVL GAS” would not lead to the mistaken belief that they originate from the same source.

Consequently, the TMO concluded that there was no likelihood of confusion between the two marks.

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