Coexistence of marks must be based on absence of likelihood of confusion

In The Cartoon Network Inc v Office for Harmonisation in the Internal Market (OHIM) (Case T-285/12, October 2 2013), the General Court has dismissed The Cartoon Network Inc’s appeal against a decision of the Second Board of Appeal of OHIM upholding the Opposition Division’s decision to refuse registration of the word mark BOOMERANG for services in Classes 38 and 41 of the Nice Classification. The refusal was based on the ground that the mark applied for was confusingly similar to the prior figurative Community trademark (CTM) BOOMERANG (No 1160050) in Class 41:

First, the General Court dealt with the definition of the relevant public. It noted that OHIM had erred in finding that the relevant public for the film production services covered by the prior CTM in Class 41 consisted of both professionals and the general public, ruling that these services “are aimed solely at professionals in the audiovisual sector… although the general public watches the films produced, it does not itself use film production services”. It further noted that the relevant public consisted of consumers who were directly ‘targeted’ by the services. Those who had an indirect relationship with the provider of the services at issue were not part of the relevant public and, therefore, were wrongfully taken into consideration by the Board of Appeal. However, as this error did not affect OHIM's finding with respect to the risk of confusion, it could not result in the annulment of the board's decision. 

With regard to the similarity of services, the General Court confirmed the findings of the Board of Appeal that the film production services covered by the earlier mark in Class 41 and the broadcasting and entertainment services covered by the disputed mark in Classes 38 and 41, although different in nature and purpose, must be considered to be complementary (ie, there was a close connection between them, in the sense that one is important for the use of the other in such a way that consumers may think that the responsibility for the provision of both services lies with the same undertaking.

The General Court then assessed the risk of confusion on the part of the relevant public on the basis of the well-established principle of interdependence. In particular, the court found that, in view of the high degree of similarity between the trademarks under comparison, there was a risk of consumer confusion, even though the relevant public consisted of professionals with a higher-than-average level of attention. 

Finally, addressing The Cartoon Network’s argument regarding the coexistence of the conflicting marks, the General Court ruled that:

• the applicant should have demonstrated that the coexistence of the marks was based on the absence of a likelihood of confusion on the part of the relevant public, not on different reasons (eg, prior rights agreements between the parties); and
• the submission of extracts from national registers and of an affidavit by one of the applicant’s directors on the market presence of the disputed trademark was not sufficient in this respect.

Overall, the decision of the General Court applied well-established rules in relation to the assessment of the likelihood of consumer confusion and the similarity of services/goods. The decision demonstrates the relatively low legal value of coexistence claims.    

Nicolas Dontas, Dontas Law Offices, Athens