CFI clarifies composite mark issues

In Merant GmbH v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance has ruled on whether and under which circumstances a sign that consists of only one component of an earlier composite trademark gives rise to a likelihood of confusion. The case is different from the THOMSON LIFE decision of the European Court of Justice which dealt with the likelihood of confusion created by an element in a later composite mark which was identical to an earlier mark.

Merant GmbH, owner of the earlier German trademark registration for the figurative mark MICRO FOCUS, opposed an application to register FOCUS as a Community trademark filed by Focus Magazin Verlag GmbH for identical and similar goods and services in, among other things, Classes 9, 16, 41 and 42 of the Nice Classification.

The OHIM Opposition Division held that there existed a likelihood of confusion with respect to the goods and services concerned. The Board of Appeal, however, overturned the decision, finding that there was no similarity between the marks (R 542/2002-2, October 18 2004).

The CFI has now overturned the Board of Appeal's decision, finding that the differences between the marks were not sufficient to exclude a likelihood of confusion. The court found that the line device running under the words 'Micro Focus' in the earlier German mark, as well as the specific font in which the mark was registered, did not render the mark visually different from the later application. The court also held that the small aural differences did not neutralize the visual and conceptual similarities. The court also found the goods and services at issue identical or highly similar.

The court concluded that the word 'MICRO', which means 'very small' in German, was of little distinctiveness as an adjective and that 'FOCUS' was therefore likely to be perceived as the dominant element of the earlier mark. The court held that the shared element characterized the earlier composite mark to such an extent that the remaining components were secondary to the overall impression of the earlier mark.

Although the CFI quoted case law warning against extracting one element from a composite mark and comparing it with another mark, it nonetheless did so in this case, comparing FOCUS to FOCUS, instead of MICRO FOCUS to FOCUS.

The line of reasoning of the decision suggests that the CFI is moving away from a true global assessment of likelihood of confusion and is returning to the primacy of the 'dominant components' test. It is arguable whether the CFI placed too much emphasis on the dominance of the shared components, rather than on the overall impression. However, the dominant components test may indeed be more appropriate in cases where the likelihood of confusion between an earlier composite mark and a later mark consisting of only one component of the earlier mark is at stake than in cases where an element identical (or similar) with an earlier mark incoporated in a later composite mark gives rise to a likelihood of confusion.

However, it is the blend of meaning and importance of the different constituents of a mark that should be decisive. The average consumer takes the marks as he or she finds them.

Matthias Sonntag, Gleiss Lutz, Stuttgart