Belts for luggage held to be highly similar to belts for trousers

European Union
In The Pukka Luggage Company Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-483/10, November 23 2011), the General Court (Fourth Chamber) has determined that a likelihood of confusion within the meaning of Article 8(1)(b) of the Community Trademark Regulation (207/2009) existed between the Community trademark (CTM) application for the word mark PUKKA in Class 18 of the Nice Classification for items including holdalls, trunks, travelling bags and luggage, and a prior CTM registration for the figurative mark PUKAS in Class 25 for clothing and belts. 

Earlier mark:


 
Upholding the decision of the Fourth Board of Appeal of OHIM, the court dismissed applicant The Pukka Luggage Company Ltd's appeal.

Article 8(1)(b) states that an opposed trademark must not be registered if there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. The relevant public for a CTM is the average EU consumer who is reasonably well informed, observant and circumspect.

In its appeal, Pukka argued that the board had failed to:
  • recognise that belts in Class 25 and luggage in Class 18 were not in competition, nor did they use the same trade channels;
  • consider all relevant criteria, in particular distribution channels and conclusions drawn in earlier decisions;
  • consider the subsets of goods included in the term 'luggage'; and
  • identify the dominant component when assessing similarities between the marks.
Pukka argued that the marks were not similar and, therefore, there was no likelihood of confusion in the European Union that would preclude the registration of PUKKA as a CTM.

Dismissing Pukka's first argument, the court noted that belts and luggage are used by consumers as accessories and, in this case, both goods were manufactured using the same materials. This was not undermined by the fact that the goods were neither in direct competition nor complementary. The court countered Pukka's assertion that the trade channels were different, noting that numerous brands in the clothing sector also produce luggage, and luxury luggage manufacturers often produce belts, meaning consumers are likely to be confronted by goods under both marks, at the same time and in the same place, in online and physical stores. In such circumstances, a consumer would be likely to conclude that the luggage and belts on offer were closely connected.

In dismissing Pukka's second argument, the court determined that the board had not acted unlawfully by failing to take distribution channels into account when making its conclusions. As the board is subject to circumscribed - and not discretionary - powers, it must assess each case solely on the basis of Regulation 207/2009, disregarding factors that it considers irrelevant. Distribution channels are not necessarily a relevant factor and, in any event, do not differ for belts and luggage.

Pukka asserted in its third argument that the board had failed to recognise that the category 'luggage' actually consisted of various sub-categories, such as rolling duffels and backpacks. The court noted that a CTM application must clearly specify the exact nature of the goods and their restrictions, but the regulation does not require an examiner to split broader categories into sub-categories. As a result, the court dismissed Pukka's third argument.

Noting that the average consumer normally perceives a mark as a whole and does not analyse details, the court then assessed the fourth argument based on the visual, phonetic and conceptual similarities of the marks as a whole, bearing in mind any distinctive or dominant components.

It was neither disputed that the marks were highly similar phonetically due to the pronunciation of the respective word elements, nor that there were no conceptual similarities between the marks. Considering the visual impact, the court determined that the word element held the dominant position in the earlier CTM, as it was able to be pronounced and, therefore, was likely to be more memorable. By comparison, the figurative element, despite being five times larger than the word element, did not convey any identifiable conceptual content and would thus fail to hold the attention of a consumer. In response, Pukka argued that consumers were likely to purchase a belt based on visual selection, placing greater emphasis on the figurative element of the prior CTM. Dismissing the fourth argument, the court noted that the word element 'Pukas' dominated the visual impression, to which the PUKKA mark was highly similar.

As a result, the court concluded that the goods covered by the respective marks showed an average degree of similarity, and even a high degree of similarity in respect of belts. As the marks were also both visually and phonetically highly similar, there was a strong likelihood of confusion within the meaning of Article 8(1)(b). Consequently, Pukka's application could not proceed to registration.

Mark Lubbock and Alex Cravero, Ashurst LLP, London

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