Conceptual differences between MARS and NARS allow registration

In Quelle AG v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has upheld the OHIM Board of Appeal's decision to allow the registration of the mark NARS.

Nars Cosmetics Inc filed an application for the Community trademark NARS for goods in Classes 3, 18 and 25 of the Nice Classification. The word element 'NARS' is represented in a stylized manner.

Quelle AG opposed the application in respect of clothing, footwear and headgear (Class 25), alleging a likelihood of confusion with its own two earlier figurative MARS German national registrations. Both of Quelle's marks are made up of a graphic element and a word element (complex marks), namely a dark globe and within it two white curved lines through which an arrow-like design cuts and, below that, the word 'MARS' in block letters.

The issue of likelihood of confusion was not considered by OHIM's Opposition Division because the use of Quelle's trademarks was contested and in the Opposition Division's view, Quelle's evidence to prove use was not sufficient. On appeal, the Board of Appeal annulled the Opposition Division's decision insofar as it found that there was no proof of genuine use of the earlier trademarks, and held that the opposing signs were neither visually nor conceptually similar and that, in spite of their phonetic similarity, confusion was highly unlikely. Consequently, the Board of Appeal rejected the opposition. This decision was confirmed by the CFI. The court stated that:

• The conflicting signs are similar at the phonetic level. The differences in pronunciation between the first letters of the conflicting signs are not sufficient to counteract the similarity arising from the identity between the most significant parts.
  
  
• The opposing signs are visually not similar. The graphic element of the earlier trademarks is dominant in view of its size and colour. The word 'MARS', although stylized, appears only as a caption which refers to the graphic element. By contrast, the mark applied for is composed only of the word 'NARS' represented in a stylized manner.
  
  
• The conflicting signs are conceptually dissimilar since the average consumer will view the earlier MARS marks as referring to the idea of the planet Mars and the NARS mark as referring to a name or a fantasy word.
  
  
• In the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the opposing signs do not always have the same weight. Since the choice of an item of clothing or a pair of shoes is generally made visually and therefore the visual perception of the marks in question will generally take place prior to purchase, the visual aspect plays a greater role in the global assessment of the likelihood of confusion.
  
  
• The mere phonetic similarity of the opposing marks does not therefore support the conclusion that there is a likelihood of confusion, particularly because, during the assessment of a likelihood of confusion, the conceptual differences which distinguish the opposing marks may be such as to counteract to a large extent the visual and phonetic similarities between those marks, provided that at least one of the marks has a clear and specific meaning so that the public is capable of grasping it immediately, and the other mark has no such meaning or an entirely different meaning.

This decision complies with prior decisions of the European Court of Justice (SIR/ZIRH Case - see, Phonetic similarity does not necessarily lead to confusion) and it seems that - as a rule - different graphic elements or conceptual differences may counteract phonetic similarities and vice versa.

Friederike Bahr, Beiten Burkhardt, Munich