CFI not obliged to compare marks from perspective of English-speaking public

European Union

In Armacell Enterprises GmbH v Office for Harmonization in the Internal Market (OHIM) (Case C-514/06 P, September 18 2008), the European Court of Justice (ECJ) has upheld a decision of the Court of First Instance (CFI) in which the latter had found that there was a likelihood of confusion between the trademark ARMAFOAM and the earlier registered trademark NOMAFOAM. 

Armacell Enterprises GmbH applied to register ARMAFOAM as a Community trademark for various goods in Class 20 of the Nice Classification. The application was opposed by nmc SA based on its earlier Community trademark NOMAFOAM, which is registered for goods in Classes 17, 19, 20, 27 and 28. The Opposition Division rejected the opposition. On appeal, the Board of Appeal of OHIM annulled the decision of the Opposition Division and refused to register ARMAFOAM. Armacell appealed to the CFI, which dismissed Armacell’s action. Armacell appealed to the ECJ.
The decision is of significance because it deals with the issue of likelihood of confusion in part of the European Union only.
Armacell argued that the word ‘foam’ in English is descriptive of the goods at issue and, consequently, there was no likelihood of confusion with the earlier Community trademark NOMAFOAM. It also argued that the CFI had failed to rule on the issue of similarity as perceived by English-speaking consumers.
The ECJ pointed out that, as a matter of law, a likelihood of confusion in part of the territory of the European Union suffices to refuse registration of a trademark. It held as follows:
In fact, the unitary character of the Community trademark means that an earlier Community trademark can be relied on in opposition proceedings against any application for registration of a Community trademark which would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in a part of the Community.
Consequently, having established that the Board of Appeal’s assessment is not flawed as regards the comparison of the marks at issue from the point of view of the relevant non-English-speaking public, the Court of First Instance was fully entitled to dismiss [Armacell’s] action without comparing those marks from the point of view of the English-speaking public.”
The action was thus dismissed.
One may wonder how the courts would rule if the issue was not the registrability of the trademark ARMAFOAM, but the use of the mark in EU countries where there is no likelihood of confusion.
Alexander von Mühlendahl, Bardehle Pagenberg Dost Altenburg Geissler, Munich

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