ALLTREK and TREK marks allowed to coexist

In Trek Bicycle Corporation v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has upheld the OHIM Board of Appeal's decision to allow, in part, the registration of the mark ALLTREK.

Audi AG applied to OHIM to register the Community trademark ALLTREK for goods and services in Classes 9, 12 and 42 of the Nice Classification.

Trek Bicycle Corp opposed the application on the basis of (i) its own earlier German national word mark TREK registered in respect of "computer for bicycles; acoustic alarm units and lighting systems for bicycles" in Class 9 and "bicycles, saddles, tyres and tubes for bicycles; bike racks to mount on motor vehicles" in Class 12, and (ii) the use of its company name Trek Bicycle (Deutschland) GmbH in Germany for those products. Audi AG restricted the goods for which protection was sought in Class 12 to motor vehicles and parts thereof.

OHIM's Opposition Division refused the registration in respect of "measuring and checking apparatus; electrical apparatus and instruments; data processing equipment" in Class 9, but rejected the opposition in respect of the goods in Class 12. On appeal, the Board of Appeal confirmed the Opposition Division's decision, arguing that the main goods covered by the earlier TREK mark (ie, bicycles and bike racks to mount on motor vehicles) and the main goods covered by the ALLTREK application (ie, motor vehicles and parts thereof) were related only marginally. Further, the board held that the signs were only slightly similar. On the same grounds, if reasoned that there was no infringement of the Trek Bicycle (Deutschland) GmbH company name. Consequently, the Board of Appeal dismissed the appeal.

The CFI confirmed the board's decision on appeal. The court stated that:

• Motor vehicles and bicycles are clearly different with respect to their nature, intended purpose and method of use. The same applies to bike racks to mount on motor vehicles and parts of motor vehicles because the only similarity between them follows from the purpose of use as both types of product are used in relation to automobiles. However, such goods have very different distribution channels.
  
  
• Since the TREK sign is included completely within the word ALLTREK, the signs are to a certain degree phonetically and visually similar. The prefix 'ALL' is a common prefix in German, derived from the word 'alle' (meaning 'all' in English). While it is true that consumers pay more attention to the initial part of a word, the 'ALL' element is not dominant when compared with the element 'TREK'. However, the court reasoned that the conceptual similarity between the signs is very small.
  
  
• In the global assessment of confusion account must be taken of the fact that the average consumer's attention is higher than normal when products such as automobiles and bicycles are concerned as these goods are expensive products designed to last for a number of years. The differences between, on the one hand, motor vehicles and parts thereof and, on the other, bicycles and bicycle equipment eliminate any likelihood of an assumption on the part of the relevant consumer that the goods have the same commercial origin, even allowing for (i) the medium level of phonetic and visual similarity between the marks, and (ii) the highly distinctive character of the TREK mark for bicycles through extensive use on the market.

Friederike Bahr, Beiten Burkhardt, Munich