CHUFI mark owner not chuffed with CFI decision

In Grupo El Prado Cervera SL v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has upheld a decision to dismiss the plaintiff's opposition to the registration of CHUFAFIT as a Community trademark. The court held that it was not confusingly similar to the plaintiff's CHUFI mark but noted that if the plaintiff had asserted that its mark was renowned - an argument abandoned earlier in the hearing - the outcome may have been different.

In December 1998 an individual named Johann Debuschewitz applied to register the mark CHUFAFIT as a Community trademark for nuts. Grupo El Prado Cervera SL (Grupo) opposed the application on the basis of earlier Spanish registrations of CHUFI and CHUFI with device for identical goods. The OHIM rejected the opposition on the grounds that there were visual, phonetic and conceptual differences between the marks. Grupo appealed but the OHIM's Board of Appeal rejected the appeal and upheld the opposition decision on the same grounds. Grupo therefore appealed to the CFI.

Grupo argued that:

• the marks were visually similar overall because of the similarity between their prefixes;
  
  
• the marks were phonetically similar because CHUFI was contained within CHUFAFIT; and
  
  
• the marks were conceptually similar because they both evoked the Spanish word 'chufa' (meaning tiger nut), which is apparently the main ingredient for the popular Spanish beverage horchata de chufa (tiger nut cordial).

Grupo added that the relevant consumers' low level of attention would mean that the mark CHUFAFIT would be associated with its earlier CHUFI mark.

In response, the OHIM contended that the word 'chufa' was descriptive of the goods in question such that any distinctiveness could not lie in the prefix 'Chuf' and Grupo could not therefore have any monopoly in this element. Concluding that both marks were weak, the OHIM maintained that the average consumer would be able to distinguish between them.

The CFI referred as usual to the concept of global appreciation, then agreed with the OHIM that the slight visual differences between the marks were enough to rule out any visual similarity. It also held that there were sufficient phonetic differences between the marks, such as the number of syllables and length of the words, for them not to be phonetically similar. Interestingly, the CFI noted that Grupo may have been successful under the confusing similarity claim if it had not abandoned at the hearing any reliance on the reputation or renown of its mark. This might have given its mark enhanced distinctiveness sufficient to make the marks conceptually similar.

As Grupo had abandoned this line of argument, the CFI concluded that, despite the identity of the respective goods, the differences between the marks were enough to rule out a likelihood of confusion.

Chris McLeod, Hammonds, London