Applicant referred to possible invalidity proceedings

European Union

In Ferienhäuser zum See GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-383/12, January 16 2014), the General Court has upheld a decision of the Fourth Board of Appeal of OHIM finding that the mark SUN PARK HOLIDAYS (and device) was confusingly similar to the mark SUNPARKS HOLIDAY PARKS (and device).

Ferienhäuser zum See GmbH filed a Community trademark (CTM) application for SUN PARK HOLIDAYS with a sun device and the descriptive slogan “Die wohl kinderfreundlichste Art Campingurlaub zu machen!” for services in Classes 39 and 43 of the Nice Classification:

Sunparks Groep NV filed an opposition based on the earlier CTM SUNPARKS HOLIDAY PARKS (and device), registered for identical services in Classes 39, 41 and 43:

The Opposition Division of OHIM upheld the opposition. Following Ferienhäuser's appeal, the Fourth Board of Appeal confirmed the decision, holding that a likelihood of confusion existed in view of the identity of the services and the high visual and conceptual similarity of the marks, notwithstanding the slightly reduced distinctive character of the earlier mark.

Ferienhäuser appealed to the General Court, alleging infringement of Article 8(1)(b) of the Community Trademark Regulation (207/2009). Ferienhäuser was of the opinion that the word element 'Sunparks' in the earlier mark, and 'sun', 'park' and 'holidays' in the mark applied for, were merely descriptive for holiday and recreational services and, therefore, could not constitute the dominant element of the signs. Ferienhäuser thus believed that only the device elements and colours of the marks should be taken into account and that they were sufficiently different.

The General Court reiterated the widely-accepted general guidelines that the likelihood of confusion must be assessed globally and that all factors relevant to the circumstances should be taken into account, including the interdependence between the similarity of the signs and the similarity of the goods and services covered.

The General Court first considered the relevant public. The Board of Appeal had taken only the German public into account; Ferienhäuser agreed, but believed that the German consumers would be very attentive as they pay great attention to their holiday preparations. The General Court pointed out that, as the earlier mark is a CTM, the relevant circles extended to the entire European Community. However, it also pointed out that, for a CTM to be refused, it suffices that a relative ground for refusal exists in part of the European Union, so that the Board of Appeal had not erred in considering only the German consumers, which are a relevant part of the European Union. The interesting argument raised by Ferienhäuser that German consumers would be very attentive when preparing their holidays was not examined in substance by the General Court, as the respective documents and studies submitted by Ferienhäuser as evidence were filed too late to be taken into account.

Further, the General Court agreed with the board that the services covered by the marks were identical. This was not disputed by Ferienhäuser.

Turning to the comparison of the signs, the General Court pointed out that the marks must be compared as a whole, which does not rule out that the overall impression conveyed by a composite mark may, in certain circumstances, be dominated by one or more of its components.

With respect to the distinctive character of the earlier mark, Ferienhäuser argued that the word elements 'sunparks', 'holiday' and 'parks' were descriptive terms that would be easily understood by the relevant public, so that the figurative elements of the earlier mark should be taken into account. The fact that 'sunparks' does not appear in dictionaries - which was an important factor for the Board of Appeal - was not relevant according to Ferienhäuser.

The General Court disagreed, pointing out that the fact that the mark had been registered meant that it had a minimum degree of inherent distinctiveness. If Ferienhäuser believed that the earlier mark had been registered in error, it should have applied for a declaration of invalidity; the court was not prepared to take these factors into account when assessing the likelihood of confusion. The court agreed with the Board of Appeal that the figurative elements and colours of the earlier mark were of secondary importance in the overall impression. The court also confirmed that the word element 'Sunparks Holiday Parks' was the main element of the earlier mark and, therefore, it had to be taken into consideration in the comparison of the signs. Any other approach would amount to denying that those word elements had a distinctive character, which was something that the board was not allowed to do.

The General Court then considered the visual, phonetic and conceptual similarity between the sign, and agreed with the Board of Appeal that the marks were highly similar visually and conceptually, and had an average degree of similarity from a phonetic point of view. The court mainly compared the elements 'Sun Park Holidays' in the mark applied for and 'Sunparks Holiday Parks' in the earlier mark, which were found to be similar. The slogan “Die wohl kinderfreundlichste Art Campingurlaub zu machen!” in the mark applied for was written in small print and was merely descriptive; it was therefore disregarded. The General Court further agreed with the board that the device elements of the marks were only of secondary importance and could not outweigh the similarities between the word elements of the two marks.

In its global assessment, the court thus agreed with the board that there was a likelihood of confusion. The fact that the earlier mark might have a weak distinctive character did not prevent this finding, as even weak marks can be confused with later marks.

The action was thus dismissed.

The decision is, as such, not a surprise, as the elements 'Sun Park Holidays' and 'Sunparks Holiday Parks' are rather similar. The most interesting aspect of the decision is that the General Court refused to take any descriptiveness arguments with respect to the word elements of both marks into account and, instead, referred Ferienhäuser to possible cancellation proceedings in order to have the distinctiveness of the earlier mark reviewed. If this approach were to be followed, it would mean that an earlier mark containing descriptive, but prominent, word elements can be enforced with respect to these descriptive elements against a later mark containing identical or similar descriptive elements. The only way for an applicant to avoid a negative result in opposition proceedings would be to attack the earlier mark with a cancellation action for lack of distinctiveness. This could, however, backfire as the applicant's own mark contains the same descriptive elements; it is therefore a questionable strategy. The German practice whereby descriptive elements would not allow to establish a likelihood of confusion, even if they are prominent in the marks, is thus not shared by the General Court.

Carsten Albrecht, FPS Fritze Wicke Seelig, Hamburg

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