Board of Appeal decision annulled in SOLVO Case

European Union

In Volvo Trademark Holding AB v Office for Harmonization in the Internal Market (OHIM) (Case T-434/07, December 2 2009), the General Court has annulled a decision of the Second Board of Appeal of OHIM in which the latter had found that the marks SOLVO and VOLVO were not similar. 

The case involved an application for the registration of the figurative sign SOLVO for goods and services in Classes 9, 39 and 42 of the Nice Classification. Volvo Trademark Holding AB filed an opposition based on several Community and UK registrations for the word and figurative VOLVO marks. The Opposition Division of OHIM took into consideration only the Community registration for the word mark VOLVO (Registration 2361087), which covered goods and services in Classes 9 ("computer software") and 42. The application, which originally covered a wide range of products, was later restricted to “computer programs for warehouse management systems and computer programs for container terminal systems”.

The Opposition Division - and, subsequently, the Second Board of Appeal of OHIM - held that the marks at issue were not similar under Articles 8(1)(b) and 8(5) of the Community Trademark Regulation (40/94). Volvo appealed to the General Court.

Before the court, OHIM contended that the goods covered by the trademark applied for were aimed at professionals, who would display a relatively high degree of attentiveness. OHIM also argued that the first letters of the marks were different, because the letter 'S' is a sibilant, while the letter 'V' is a fricative. According to OHIM, this was sufficient to differentiate the marks, even though the four remaining letters were identical.

Interestingly, the court found that the marks were different visually and conceptually. However, based on a global assessment of the likelihood of confusion, the court concluded that the marks were similar since they shared a degree of phonetic similarity. This shows that phonetic similarity is, on its own, sufficient to find a likelihood of confusion.

Volvo also argued that the Board of Appeal had erred in not taking into account all the VOLVO marks on which the opposition was based. However, the court found that only Registration 2361087 covered highly similar products and, therefore, the board had not erred in basing its decision on that trademark alone.

The most interesting part of the decision concerned the considerations of the court on the assessment of similarity under Articles 8(1)(b) and 8(5). While Article 8(1)(b) requires the existence of a likelihood of confusion, Article 8(5) (corresponding to Article 5(2) of the First Trademarks Directive (89/104/EEC)) requires only that there is a degree of similarity between the marks, so that the relevant section of the public will establish a link between them. The court pointed out that this link is defined not only by the degree of similarity of the signs, but also by the nature and similarity of the goods and/or services, the strength of the reputation of the earlier mark, the degree of distinctiveness of the earlier mark (whether inherent or acquired through use) and the existence of a likelihood of confusion.

As the court had found that the marks at issue were similar under Article 8(1)(b), it concluded that there was a sufficient link between them for the purposes of Article 8(5).

The decision of the Board of Appeal was thus annulled.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna

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