CFI spikes TRACK & FIELD opposition

European Union

In Fratex Industria e Comércio Ltda v Office for Harmonization in the Internal Market (OHIM) (Case T-103/07, September 23 2009), the Court of First Instance (CFI) has upheld a decision of the Board of Appeal of OHIM in which the latter had found that there was no likelihood of confusion between the figurative trademarks TRACK & FIELD USA and TRACK & FIELD.

USA Track & Field Inc filed an application for the registration of TRACK & FIELD USA (and winged shield design) as a Community trademark for goods in Class 25 of the Nice Classification ("clothing, footwear and headgear"). Fratex Industria e Comércio Ltda opposed the application on the basis of its earlier Portuguese registration for TRACK & FIELD (and athlete design) for clothing in Class 25.

The Opposition Division of OHIM upheld the opposition. The Board of Appeal annulled the decision, stating that there was no likelihood of confusion between the marks because:

  • the device elements of the marks were different;
  • the mark applied for contained the additional word element 'USA';
  • the expression ‘track & field’ was secondary in the mark applied for because of its position and size;
  • consumers would focus on the device elements of the marks; and
  • ‘track & field’ was descriptive of the goods for the English-speaking section of the relevant Portuguese public, but was fanciful for the other section of the public.

The board also held that the term ‘USA’ in the mark applied for would be seen as a reference to the geographical origin of the goods and that the device element would have no conceptual significance. The board concluded that there was no likelihood of confusion because the overall impression of the marks was different. Fratex appealed to the CFI.

Fratex requested that the CFI order that OHIM refuse the application. It also referred to the arguments and evidence submitted before OHIM, and suggested submitting new evidence. Fratex further argued that OHIM had infringed the provisions of Article 8(1)(b) of the Community Trademark Regulation (40/94), claiming that:

  • the word element ‘track & field’ was dominant in the mark applied for;
  • in Portugal, 'USA' would not be understood as a reference to the country because the United States are designated by the abbreviation 'EUA'; and
  • 'USA' would be seen to refer to the verb ‘usar’ (Portuguese for ‘to use/to be used to’) and could be understood as a slogan.

Fratex further alleged that the marks were phonetically identical and had no meaning in Portuguese, and, therefore, were also conceptually identical. In view of the identity of the products, there was a likelihood of confusion because the relevant public would consider that the companies were economically or legally linked.

First, the CFI stated that it was not entitled to issue orders to OHIM, which had to draw the appropriate inferences from the grounds of the CFI’s judgment. The CFI also confirmed that a general reference to the arguments set out in the proceedings before OHIM did not satisfy the requirements of Article 44(1)(c) of the Rules of Procedure of the CFI and, therefore, could not be taken into account. Moreover, evidence which was not produced before OHIM could not be used to contest the validity of the board’s decision before the CFI.

The CFI further held that the stylized image of an athlete and the expression ‘track & field’ written in large characters in the earlier mark would retain the consumer’s attention. For the English-speaking consumers who would understand ‘track & field’, the image of the athlete would illustrate the word element.

In respect of the mark applied for, the device element and the expression ‘USA’ were visually dominant, while the expression ‘track & field’ was unremarkable or secondary. The overall assessment of the marks thus showed that the significance of the expression ‘track & field’ differed in each mark. The fact that both marks contained this expression was insufficient in itself to conclude that they were visually similar. The expression ‘USA’ - whether the relevant public understood it or not - and the winged shield element would be of the most significance to consumers because of their size and position in the mark. In respect of the expression ‘USA’, its potentially low distinctive character did not necessarily mean that this element could not be seen as dominant in the mark applied for.

Conceptually, the athlete device in the earlier mark was meaningful - even the section of the public who would not understand ‘track & field’ would perceive the concept of athletics. The mark applied for was conceptually different because of the device of a shield with wings and the addition of ‘USA’, which referred to a geographical origin of the goods. The expression ‘USA’ was commonly used and the English-speaking part of the Portuguese public would understand that it designated the United States. Therefore, consumers would not perceive the concept of running activities in the mark applied for. The CFI concluded that the expression ‘track & field’, which was common to both marks, was insufficient to outweigh the conceptual differences between the marks.

Phonetically, the CFI held that consumers would consider the visual impact of the figurative element when pronouncing the mark TRACK & FIELD USA and would focus on the dominant word element (ie, 'USA'), whereas they would read the earlier mark as ‘track & field’. Although the expression ‘track & field’ was of minor importance in the mark applied for, a section of the public could still pronounce it before or after the word 'USA'.

In respect of the likelihood of confusion, the CFI concluded that the phonetic similarity did not outweigh the visual and conceptual differences between the marks. The visual differences were of particular interest in the fashion industry, where the appearance of goods was one of the most relevant factors for the public at the time of purchase. The board was thus right to decide that given the substantial visual and conceptual differences and the relative insignificance of the phonetic similarity, there was no likelihood of confusion between the marks, despite the identity of the goods.

The decision shows that the extent of the visual, phonetic or conceptual similarities in the global assessment of marks with a view to determining the likelihood of confusion is not based on a subjective approach but, instead, will depend on the facts specific to the case. The CFI concluded that in light of the conditions under which the goods are marketed, the nature of the goods and the perception of the public, the visual aspect was the most important. Interestingly, the expression ‘USA’ was considered as a dominant element of the visual impression and a contributory factor to the conceptual difference between the marks, despite relating to the geographical origin of the goods.

Emilie Scheffer and Chris McLeod, Hammonds LLP, London

Unlock unlimited access to all WTR content