AMPLITUDE is confusingly similar to AMPLY, says CFI

In Hoya Kabushiki Kaisha v Office for Harmonization in the Internal Market (OHIM) (Case T-9/05), the Court of First Instance (CFI) has affirmed a decision by the Board of Appeal of OHIM holding that the marks AMPLITUDE and AMPLY are confusingly similar.

Hoya Kabushiki Kaisha filed an application for the registration of the mark AMPLITUDE for eyeglasses and similar goods in Class 9 of the Nice Classification. Indo Internacional SA lodged an opposition based on the earlier Spanish mark AMPLY (a graphic representation of the word 'amply' in a turquoise colour) for identical goods in Class 9. The Opposition Division of OHIM rejected the opposition, finding that there was no likelihood of confusion between the marks. The First Board of Appeal upheld the opposition. Hoya appealed to the CFI.

For the purposes of assessing the likelihood of confusion, the CFI took account of:

• the fact that the goods covered were identical; and
  
  
• the point of view of the average Spanish consumer.
  

With regard to the visual comparison of the marks, the CFI held that the figurative elements of the mark AMPLY were marginal and should be neglected. Moreover, the CFI stated that the parts that are common to both marks ('ampli' and 'amply') are practically identical. Hoya argued that AMPLITUDE is almost twice as long as AMPLY. However, the CFI found that the four additional letters of the mark applied for ('tude') represent only an insignificant suffix; the ending ‘tude’ is similar to the ending ‘tud’, which is extremely common in Spanish. The CFI thus agreed with the Board of Appeal that the marks AMPLITUDE and AMPLY are visually similar.

From a phonetic point of view, the CFI held that even though the beginning of the marks was identical, there was a difference between them due to:

• the different lengths of the words 'amplitude' and 'amply'; and
  
  
• the fact that, in Spanish, the main stress is on the penultimate syllable in both marks (ie, 'am' for AMPLY and 'tu' for AMPLITUDE).

From a conceptual point of view, the CFI conceded that the words 'amplitude' and 'amply' do not exist in the Spanish language and are derived from the English language. However, the court held that there was a conceptual link between the root of the marks (‘ampli/amply’) and the semantic family of Spanish words such as amplitud (Spanish for amplitude). According to the CFI, this would be sufficient to establish a conceptual similarity. Further, the CFI held that there was a very strong relationship between the goods covered and the meaning of the two marks. The CFI thus concluded that there was a strong conceptual similarity between AMPLITUDE and AMPLY.

Taking into account these circumstances, the CFI agreed with the Board of Appeal that the marks AMPLITUDE and AMPLY are confusingly similar, especially considering the fact that the goods covered are identical. Therefore, the CFI dismissed the appeal.

Even though this decision is in line with several other recent decisions, it raises the following questions:

• If the fact that AMPLITUDE and AMPLY have different lengths reduces the phonetic similarity between the marks, why is the same not true with regard to the visual similarity of the marks? Given that AMPLITUDE is almost twice as long as AMPLY, it is difficult to understand why 'tude' was considered to be an insignificant suffix.
  
  
• The strong relationship between the goods covered and the meaning of the marks could have reduced the distinctiveness of AMPLITUDE and AMPLY. However, the CFI ignored this fact and concluded that such relationship confirmed that the marks were conceptually similar.

Carsten Albrecht, Lovells LLP, Hamburg