CFI makes arch enemy

In Calzaturificio Frau SpA v Office for Harmonization in the Internal Market (OHIM) (Case T-304/07, November 5 2008), the Court of First Instance (CFI) has upheld a decision of the First Board of Appeal of OHIM in which the latter had found that there was a likelihood of confusion between the figurative mark applied for and the opponent’s earlier figurative Community trademark (CTM).

In October 2003 Calzaturificio Frau SpA applied for the registration of a figurative mark consisting of a stylized figure in the shape of an arch or a bridge leaning to the right with bevelled legs of different lengths. The application related to goods in Classes 18 of the Nice Classification ("leather and imitations of leather, and goods made of these materials not included in other classes; animal skins, hides; trunks and travelling bags, umbrellas, parasols and walking sticks; whips, harness and saddlery") and 25 ("clothing, footwear and headgear").

In September 2004 Camper SL opposed the application in relation to goods in both classes on the basis of its earlier marks, including a figurative CTM for goods in Class 18 (the only one considered before the CFI). This earlier mark also consisted of a stylized figure in the shape of an arch or a bridge with bevelled legs of different lengths. Unlike the mark applied for, it leans to the left and the figure appears as an outline rather than in block colour.

In April 2006 the Opposition Division of OHIM refused registration of Frau's mark for goods in Class 25, but decided there was no likelihood of confusion between the marks in relation to goods in Class 18. Accordingly, the opposition was rejected in relation to those goods. In June 2007 the Board of Appeal found that there was also a likelihood of confusion in relation to goods in Class 18 and that Frau’s application should thus be rejected in its entirety. Frau appealed to the CFI.

Frau cited previous decisions of OHIM in support of its case. However, the CFI reasserted the principle that an appeal has to be decided solely on the basis of the Community Trademark Regulation (40/94). Although previous decisions may support a case, Frau had failed to demonstrate that either the facts or the legal issues in the cases cited could be compared to the present case.

Like many previous appellants, Frau also invoked the registration of an identical mark in the United States. Somewhat predictably, the CFI reasserted the complete independence of the CTM regime from non-EU legal systems and registrations. Frau also argued that the Board of Appeal had failed to comply with its obligation to state its reasoning clearly and unambiguously. The CFI acknowledged that OHIM was bound by this obligation, but found that it had been satisfied by the Board of Appeal in this case.

Frau's main arguments in support of its appeal to the CFI were as follows:

a proper visual and conceptual comparison between the two marks would have led to the conclusion that there was no likelihood of confusion between them; and
the Board of Appeal had failed to take into account the earlier mark’s very low degree of distinctiveness.

With regard to the first argument, the CFI summarized its case law as follows: “a likelihood of confusion” means that consumers may believe (because the marks and/or the relevant goods or services are identical or similar) that the goods or services in question originate from the same undertaking or from undertakings with are economically linked to each other.

Frau challenged the board’s decision with regard to both the visual and the conceptual comparison of the marks. The CFI held that the board’s assessment was justified and, in the process, clarified its approach and various elements of the test to be applied to decide this question. The CFI held that the marks, which shared the same basic design, were visually similar; the visual differences (one design leaning to the right, the other to the left, one transparent and the other in a colour that was neither unusual nor distinctive) between the two marks were insufficient to compensate the fact that consumers rarely have an opportunity to compare two marks directly. The likelihood of confusion must be assessed on the basis that what a consumer will have in mind when seeing a mark is an imperfect recollection of the other mark.

Frau argued that consumers of Class 18 products relating to horse riding had a higher degree of attention than the average consumer and would therefore notice those differences. The CFI held that the possible higher degree of attention of one group of consumers in relation to some products in a class comprising many generally defined types of product was not sufficient to justify assessing the likelihood of confusion by reference to those “more attentive consumers” rather than to the “average consumer”.

The CFI also rejected Frau’s argument that the two marks were conceptually different in that the mark applied for did not, as was stated by the Board of Appeal, represent a bridge or an arch. The CFI found that the board was right to state that both marks brought a bridge or an arch to mind. Frau’s statement that the mark applied for belonged to the “other geometrical figures, indefinable designs” class under the Vienna Agreement was held to be irrelevant, as this classification is exclusively for administrative purposes. The CFI thus agreed that, regardless of any possible difference in the respective meaning of the two marks, there was no conceptual difference between them to neutralize their visual similarity.

Finally, Frau argued that the earlier mark had a low degree of distinctiveness: it was a simple geometrical figure commonly used in the relevant industry and was comprised in marks registered by other manufacturers. The CFI found that Frau had failed to establish that this was the case. The CFI went on to state that, in any event, the low degree of distinctiveness of the earlier mark was only one of the relevant factors in assessing the likelihood of confusion, and that it had to be balanced against others, such as the similarity between the marks. The CFI held that in cases such as this one, the fact that the marks are similar and cover identical products would create a likelihood of confusion even if the earlier mark has only a low degree of distinctiveness.

As in other recent cases (see, eg, Neoperl Servisys AG v OHIM (Case T-256/06)), the CFI has repeatedly made it clear that it would not accept a party’s argument unless it was supported by solid evidence. Citing cases and mere assertions are insufficient.

Marine Baudriller, Hammonds LLP, London

CFI makes arch enemy

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