Acronym held to be of average distinctiveness

European Union
In Goncharov v Office for Harmonization in the Internal Market (OHIM) (Case T-34/07, January 21 2010), the General Court has held that there was a likelihood of confusion between the marks DSBW and DSB.
 
On March 13 2002 Karen Goncharov, a Russian national, applied for the registration of DSBW as a Community trademark (CTM) for services in Classes 39, 41 and 43 of the Nice Classification (including travel services). On August 25 2003 DSB, the Danish railway company, lodged an opposition based on its earlier CTM DSB, registered in Classes 39, 41 and 42.
 
The Opposition Division rejected the opposition on September 16 2005. However, on December 4 2006 the Board of Appeal annulled the decision of the Opposition Division, holding that:
  • the marks were sufficiently similar to give rise to confusion; and
  • the services covered by the marks were identical or similar.
Goncharov appealed to the General Court.
 
The court first held that the marks were visually and phonetically similar. It pointed out that the marks coincided in their first three letters, which constituted the earlier mark. The presence of the letter 'W' at the end of the DSBW mark was found to have little impact from a visual and phonetic point of view, due to the fact that:
  • consumers pay more attention to the first part of word marks; and
  • consumers must rely on an imperfect recollection of the marks.
Turning to the overall assessment of the marks at hand, the court pointed out that the earlier mark was sufficiently distinctive. The fact that 'DSB' was the acronym of a national railway company was irrelevant for the purpose of assessing the distinctiveness of the mark. According to the court, it was difficult to conclude that the acronym of the Danish railway company - which has an 80% market share in that country - is a weak mark. Given the identity or similarity of the services and the similarity of the marks, there was a likelihood of confusion between DSBW and DSB.
 
The decision is in line with the Community case law on the comparison of short marks. According to decisions of OHIM and the EU courts, there will be no likelihood of confusion if the first letters - or, in some cases, the middle letters - of the marks are different. However, the marks will be found to be similar if only their last letter is different. For example, in Royal Canin SA v Lipidos Santiga SA (Case R 1092/2008-4), the Fourth Board of Appeal of OHIM found that the marks L.I.P. and LIPSA were confusingly similar.
 
An interesting point lies in the conclusions of the court on the distinctiveness of the earlier mark. OHIM usually finds that trademarks composed of initials are of average distinctiveness. The court paid particular attention to the market share of the Danish railway company to justify its approach.
 
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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