Duarte Y Beltran SA v. OHIM(CFI (Second Chamber); T-353/02; 13.4.05) (Judgment not in English at the time of writing)
The application for INTEA (word mark) in Classes 3 and 21 for amongst other products shampoos, cosmetic products, soaps, combs, brushes etc was opposed by the proprietor of two earlier marks for INTESA registered for goods in Classes 3 and 21 amongst others. The Opposition Division partially allowed the opposition on the grounds that, under Article 8(i)(b), there was likelihood of confusion between the marks in relation to goods in Class 3. The Board of Appeal dismissed the appeal.
The CFI upheld the decision of the Board of Appeal: the signs were visually similar as they only differ in the letter "S"; phonetically, the marks were similar in the various languages of countries where the earlier mark was registered, in particular, in Finnish, Greek, Italian and Swedish (the fact that the signs were pronounced in a slightly different manner in English was not relevant as it was sufficient that there was a risk of confusion in several other European languages); and finally, there was no conceptual similarity, despite the fact that the word "intesa" means contract in Italian but does not have any meaning in any of the other relevant languages however, the CFI criticised the Board of Appeal for finding that the meaning of the word "intesa" in Italian was irrelevant because of the other national registrations were that word had no meaning because only the earlier Italian registration covered Class 21 and the products covered by the application in Class 21 were neither identical nor similar to the products covered by Class 3 in the earlier registrations).
The Gillette Company v. OHIM(CFI (Second Chamber); T-286/03; 13.4.05) (Judgment not in English at the time of writing)
Gillette’s application to register the figurative mark XTREME RIGHT GUARD SPORT in Class 3 for goods including non-medicated preparations for use in the bath or shower, anti-perspirants and deodorants was opposed by Wilkinson Sword on the basis of four of its German registrations for the word mark XTREME and for three figurative marks all incorporating the words WILKINSON SWORD XTREME registered in Class 3 for shaving products. The Opposition Division rejected the opposition on the ground that the conflicting signs were sufficiently different and that there was no likelihood of confusion under Article 8(i)(b). The Board of Appeal allowed Wilkinson Sword’s appeal on the basis that, XTREME being the dominant element of the conflicting marks, there were similarities between the application and two of the earlier marks, as well as a high degree of similarity between the products such that there was a risk of confusion.
The CFI upheld the decision of the Board of Appeal. The relevant public was the average German consumer who would not pay a high level of attention when purchasing such products. Since the parties’ products belonged to the same family, they could easily be considered as part of a general range of cosmetic products and could be perceived as sharing the same commercial origin.
The CFI noted that since consumers generally decide to purchase such products based on what they see on shop shelves, visual similarity was of greater importance in the global appreciation of the similarity of the marks than conceptual and phonetic similarity. The signs were visually similar because of the similar presentation of the dominant element XTREME due mainly to: (1) the larger size of that term in relation to the other elements of the marks; (2) its central position; (3) the relatively large size of the letter X; and (4) the emphasis placed on the XTREME element. The CFI further held that the element XTREME had the most distinctive character, since the other components played a secondary position and were descriptive of the products in question or indicated the general range of products to which those goods belonged, and that there was therefore a high degree of conceptual similarity between the signs. The marks were also phonetically similar because of the dominance of XTREME.
Reemark Gesellschaft fur Markenkooperation mbH v. OHIM(CFI (Second Chamber); T-22/04; 4.5.05)
Bluenet’s (previously BMG Music) application for WESTLIFE in Classes 9, 16, 25 and 41 was opposed by Reemark on the basis of its earlier German and international registrations for WEST. The Opposition Division, considering the opposition on the basis of the German mark only, rejected Bluenet’s application under Article 8(i)(b). The Board of Appeal allowed Bluenet’s appeal because, although the goods and services concerned were partly similar and partly identical, there was a low degree of visual and aural similarity between the signs and only a certain degree of conceptual similarity such that the marks could coexist.
The CFI allowed the appeal and annulled the decision of the Board of Appeal. The CFI held that the addition of “life” to “west” was not sufficient to distinguish the two conflicting marks significantly on a conceptual basis. Since both marks would be perceived as evoking Western goods or services in the case of WEST or as pertaining to a Western lifestyle in the case of WESTLIFE, they both had similar connotations, which entailed a degree of conceptual similarity. Concerning aural similarity, the CFI found that only some of the consumers would pronounce the “west” element of WESTLIFE in the English way. In these circumstances, there was a degree of aural similarity between the two marks. The CFI was also satisfied that there was a degree of visual similarity between the marks because the earlier trade mark WEST was the first component of the mark applied for and because the average consumer relying on his imperfect memory of the marks could confuse them.
The CFI referred to Oriental Kitchen v. OHIM (T-286/02) where the application contained the earlier mark and it was held that, where those words taken together or in isolation, had no conceptual meaning for the public concerned, the marks at issue, each considered as a whole, were normally to be regarded as similar under Article 8(i)(b). The CFI was satisfied that the marks were confusingly similar.
Chum Ltd v. OHIM(CFI (Fourth Chamber); T-359/02; 5.4.05)
Chum’s application to register STAR TV in Classes 38 and 41 was opposed by Star TV AG on the basis of its international figurative mark STAR TV and the design of a star registered in the same classes. The Opposition Division allowed the opposition under Article 8(i)(b). The Board of Appeal dismissed Chum’s appeal and the CFI upheld the decision of the Board of Appeal.
In relation to the relevant public, the CFI rejected Chum’s submission that the services to which its trade mark application related were directed at the general public whilst those covered by the earlier mark were directed at a more specialised group. For all the services concerned, except the distribution of television programmes, the relevant public consisted of average consumers in the Members States in which the opponent’s international trade mark was protected, namely Germany, Austria, the Benelux countries, France and Italy. In relation to the services associated with the distribution of television programmes referred to in the application and falling under Class 41, the relevant public was a public consisting of professionals working in the audiovisual and television broadcasting sectors, who were likely to be especially interested and attentive when choosing a supplier. The CFI was satisfied that despite the differences in description, the services in question were in part identical and in part similar.
The CFI rejected Chum’s argument that the essential difference between a word mark and a figurative mark precluded any comparison of the two marks from a visual point of view. The words “star TV” formed the dominant element of the earlier mark. Accordingly, given that the mark claimed was identical to the dominant verbal element of the earlier mark, the Board of Appeal was correct in finding that there was a high degree of visual similarity between the two marks (Matratzen Concord v. OHIM – Hukla Germany (T-6/01) followed). The conflicting marks were also conceptually similar in the sense that they both evoked the same idea of a film star. Indeed, even if the average consumer in Members States such as Germany, Austria, the Benelux, France and Italy did not necessarily know the meaning of the English word “star”, that word was in current usage in those countries to describe a film star. Thus, both marks evoked the idea of a film star.
Celltech R&D Ltd v. OHIM(CFI (Third Chamber); T-260/03; 14.4.05)
The application for CELLTECH in Classes 5, 10 and 42 was rejected by the OHIM examiner. The Board of Appeal dismissed the applicant’s appeal and held that pursuant to Article 7(1)(c), CELLTECH could not be registered since it was such as to be immediately and unambiguously perceived as a term designating activities in the field of cell technology and products, apparatus and equipment used in connection with or resulting from those activities. The Board of Appeal further found that CELLTECH lacked distinctiveness under Article 7(i)(b).
The CFI allowed the appeal. When the Board of Appeal and OHIM assessed whether CELLTECH, taken to mean “cell technology”, was descriptive of the goods and services concerned, they both failed to explain in scientific terms the meaning of cell technology. Moreover, neither the Board of Appeal nor OHIM explained in what way those terms gave any information about the intended purpose and nature of the goods and services referred to in the application. Finally, the Board of Appeal also failed to show that the relevant public would immediately make a definite and direct association between the pharmaceutical goods and services claimed and the meaning of the word mark CELLTECH. Even if the goods and services concerned could be used for functional purposes involving cell technology, that fact would not be sufficient to establish that CELLTECH could serve to designate their intended purposes.
Reporter’s note: I am grateful to my colleagues at Bird & Bird Cristina Garrigues and Brigitte Gratton for helping me with the preparation of this month’s report.
All CFI and ECJ decisions can be found at http://curia.eu.int/en/content/juris/index.htm.
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