CFI decision leaves 4 OUT LIVING on edge

European Union

In Aldi Einkauf GmbH & Co OHG v Office for Harmonization in the Internal Market (OHIM) (Case T-307/08, October 20 2009), the Court of First Instance (CFI) has held that the figurative marks 4 OUT LIVING and LIVING & CO were confusingly similar.

Aldi Einkauf GmbH & Co OHG applied for the registration of the mark 4 OUT LIVING (and design) as a Community trademark for goods in Classes 18, 25 and 28 of the Nice Classification. Goya Importaciones y Distribuciones SL opposed the application based on the earlier Spanish mark LIVING & CO (and design), which was registered for goods in Classes 3, 14, 16, 18, 21, 25, 34 and 35.

The Opposition Division allowed the opposition for the goods in Classes 18 and 25. The First Board of Appeal of OHIM affirmed and Aldi appealed to the CFI.

The CFI first held that because the earlier mark was a Spanish registration, the relevant consumer was the average Spanish consumer. The CFI then stated that goods in Classes 18 and 25 are mass consumption goods which are frequently purchased and used. Moreover, the degree of attention paid to these goods was no higher than average, as the goods were neither costly nor rare. The CFI concluded that the purchase of these goods did not require specific knowledge, and did not have a serious impact on the health, budget or life of Spanish consumers.

In a move which seems to stretch the boundaries of previous case law, the CFI also held that because the goods were identical or highly similar, a low level of similarity between the marks would be sufficient to result in a finding of a risk of confusion. The usual conclusion in such circumstances is that a lower level of similarity than might otherwise be the case may be sufficient, but the finding in this case went a step further in referring to a "low level" of similarity.

The main basis for the decision on the similarity of the marks was that the additional elements in Aldi's mark - the word 'out', the numeral 4 and the star device - were background elements and were less perceptible than the perfectly readable word 'living'. The CFI also pointed out the similarity in font of the word ‘living’ in both marks.

The CFI found that:

  • the phonetic differences created by the additional elements would not remove the similarities between the marks; and
  • the marks would have a clear conceptual link, given that the word 'living' is a basic English word which would be understood by the younger Spanish generation.

The CFI implicitly agreed with the Board of Appeal's finding that the word ‘living’ did not have a high level of distinctive character for these goods. Nonetheless, it held that the word was still a distinctive feature of the marks, as the goods in question are purchased after a visual inspection. Therefore, the visual appearance of the marks is of great importance.

The CFI concluded that focusing on the weakness of the distinctive character of the word ‘living’ would reduce the protection of the earlier mark to complete reproductions of the mark, which would be inconsistent with the very nature of the global appreciation of the marks. However, this reasoning did not address the fact that the earlier mark consisted of the phrase 'Living & Co', not the word ‘living’ per se.

Niamh Hall, FRKelly, Dublin and Belfast

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