Clothing marks held to be dissimilar due to prevalence of visual comparison

European Union
In New Yorker SHK Jeans GmbH v Mortensen (Case 3242 C, March 2 2010), the Cancellation Division of the Office for Harmonization in the Internal Market (OHIM) has held that there was no risk of confusion between the trademark PUNK DELUXE and the earlier mark JUNK DE LUXE.
 
On February 2 2007 German company New Yorker SHK Jeans GmbH filed an application for the registration of the trademark PUNK DELUXE (and design) as a Community trademark in Classes 3, 18 and 25 of the Nice Classification (including clothing). The mark consisted of two horses, a skull and cross-bones, two small hearts and a crown, with the stylized words 'punk deluxe' written between the legs of the two horses. The mark was registered on December 12 2007.
 
On November 3 2008 Thomas Gundorph Mortensen lodged a request for a declaration of invalidity of the mark before OHIM. The request was based on a likelihood of confusion with the earlier Community word mark JUNK DE LUXE for goods in Class 25. The Cancellation Division admitted that the goods in Class 25 were identical, but held that the marks were dissimilar.
 
First, the Cancellation Division considered that the figurative elements of the contested mark were the dominant and most eye-catching part of the mark. As these elements had no counterparts in the earlier mark, the overall visual impression of the marks was dissimilar. The Cancellation Division also found that the marks were dissimilar conceptually in territories where English is not understood. According to the Cancellation Division, the word 'punk' would be understood by the relevant public, given its widespread use to describe a type of rock music and way of life. In contrast, 'junk' appeared to be a less commonly known English word. Finally, the Cancellation Division held that, from a phonetic point of view, there was a high level of similarity between the marks, which differed only in their first letter.  
 
Turning to the global assessment of the marks, the Cancellation Division pointed out that, even if oral communication concerning products in Class 25 is not excluded, the choice of items of clothing by the public is generally made on a visual basis. Therefore, the visual perception of the marks prevailed. The Cancellation Division concluded that the visual dissimilarity between the marks outweighed the phonetic similarity and, as a result, there was no likelihood of confusion among the public.    
 
The request for a declaration of invalidity was thus rejected.
 
Under a strict legal approach, the decision is in line with EU case law, under which the visual aspect of trademarks for clothing prevails over the phonetic and conceptual aspects. It also follows the approach developed by the EU courts for the assessment of word and device marks, under which the word part of the marks is not automatically held to be dominant. The latest example of this approach may be found in Société des produits Nestlé SA v OHIM (Joined Cases T-5/08 to T-7/08, March 25 2010) (for further details please see "Three decisions annulled due to failure to assess likelihood of confusion").
 
However, from a business point of view, the decision of the Cancellation Division in the present case is debatable. Given the high level of similarity of the marks with regard to pronunciation and structure, and the fact that the goods are identical, there is a risk - at the limit between a risk of association and a risk of confusion - for the consumers.
 
The owner of the mark JUNK DE LUXE would be advised to follow an alternative course of action based on other grounds, such as unfair competition, at a national level.
 
Franck Soutoul and Jean-Philippe Bresson INLEX IP EXPERTISE, Paris

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