Classification of goods and services serves exclusively administrative purposes

European Union

In Atlas sp zoo v Office for Harmonisation in the Internal Market (OHIM) (Case T-558/11, November 21 2012), the General Court has found that there was a likelihood of confusion between two identical word marks given the similarity of the goods and the fact that they were aimed at the same public.

Polish company Atlas Sp zoo filed a Community trademark application for the word mark ARTIS in respect of goods in Classes 2 and 17 of the Nice Classification, mainly for protective coatings and insulating materials. The intervener, French company Couleurs de Tollens, opposed the application on the basis of its earlier French national word mark ARTIS, covering goods in Classes 1 and 19 (mainly insulating products in the form of chemical products used in industry, and non-metallic building materials and coatings for floors and walls).

The Opposition Division of OHIM upheld the opposition and rejected the application. Upon appeal by Atlas, the First Board of Appeal of OHIM dismissed the appeal by decision of July 2 2011. The board confirmed that there was a likelihood of confusion due to the identical nature of the signs and the similarity of the goods in question.

Atlas appealed to the General Court, raising a single plea in law: that the board had violated Article 8(1)(b) of the Community Trademark Regulation (207/2009) by confirming that there was a likelihood of confusion. The General Court dismissed the action mainly for the following reasons:

  • It was undisputed by the parties that the marks at issue were identical.

  • With regard to the relevant public, it was also undisputed that the territory for the purposes of assessing the likelihood of confusion was France, given that the opposition was based on a French mark. Moreover, and contrary to Atlas' argument, the relevant public for both marks was the same. In addition, the goods covered by the earlier mark, such as cement, lime and plaster in Class 19, could be aimed at both non-professionals (eg, DIY enthusiasts) and professionals. Consequently, the public was likely to have a higher degree of attention than normal when choosing the goods at issue.

  • Above all, the General Court disagreed with Atlas' argument that the goods at issue were different because:
    • they fell within different classes;
    • their distribution channels were different; and 
    • they were not aimed at the same consumers.

The court underlined that the goods at issue were, overall, of a similar nature as, in general, they were used for the construction, protection, maintenance and repair of buildings. They had the same intended purpose (ie, coating and insulation). Furthermore, some of the goods were complementary. Concerning the argument that the goods fell within different classes, the court made it clear that the classification of goods and services is to serve exclusively administrative purposes, and that goods and services may not be regarded as being dissimilar from each other on the grounds that they appear in different classes under the Nice Classification.

  • In the light of the identical nature of the signs at issue, the similarity of the goods in question and the fact that they were aimed at the same public, the court dismissed the action in its entirety and confirmed that there was a likelihood of confusion between the signs.

The decision is unsurprising and convincing. It reminds applicants that, when assessing the similarity of goods/services, the fact that they fall within different classes is irrelevant and cannot replace a detailed assessment of the goods/services to be compared.

Florian Schwab, Boehmert & Boehmert, Munich

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