BROTHERS marks could be thought to be siblings, CFI rules

In Camper SL v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has held that a device mark containing the words 'Brothers by Camper' was likely to be confused with a device mark prominently displaying the word 'Brothers'.

Spanish shoe company Camper SL filed an application to register a device mark containing the phrase 'Brothers by Camper' as a Community trademark for clothing, footwear and headgear. Swedish company JC AB opposed the application on the basis of its registration of a device mark incorporating the word 'Brothers', which was registered in Sweden, Finland and Denmark for the same type of products. The OHIM Opposition Division upheld the opposition, as did the Board of Appeal and subsequently the CFI.

The CFI considered the visual, aural and conceptual similarity of the two marks. Having regard to the position, size and typeface of the word 'Brothers', the court held that, even solely on a visual review, the Board of Appeal was correct in finding that this word dominated Camper's mark and created a likelihood of confusion for the relevant English-speaking Danish and Finnish public. The court also found that in view of the tendency to abbreviate marks, consumers were unlikely to pronounce the words 'by Camper' in Camper's mark, which would add to the likelihood of confusion between the respective uses of the dominant element 'Brother'. As far as conceptual similarity is concerned, the court found that the meaning of 'brother' was clear to the relevant audience and that in spite of the graphic differences between the marks and the use of the words 'by Camper', this was not sufficient to render the marks conceptually different.

The court then went on to focus on the overall likelihood of confusion. It noted that it is common in the clothing sector for the same mark to be configured in various ways according to the type of product and it was therefore conceivable that the relevant consumer would regard the products covered by the conflicting signs as belonging to two distinct ranges of products, which are both manufactured by the same undertaking. Also, the court considered that the renown of the CAMPER mark would not prevent average consumers accustomed to buying clothing, footwear or headgear bearing the device mark containing the word 'Brother' from confusing the products with Camper's goods. The court observed that the average consumers would rely on their imperfect mental image of the various marks and would only occasionally have the opportunity to carry out a direct comparison. Accordingly, the dominant element of the marks is crucial and in this case, the figurative components and design did not prevent a likelihood of confusion between the marks. As a result, the court dismissed the appeal.

Alistair Payne, Matheson Ormsby Prentice, Dublin