Court of First Instance bends to CONFORFLEX opposition

In Koubi v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance has refused the registration of CONFORFLEX on the grounds that it was confusingly similar to prior registered FLEX marks.

Jean-Pierre Koubi, an individual, applied to register with the OHIM the mark CONFORFLEX for goods in Class 20 of the Nice Classification, specifically, bedroom furniture. The registration was opposed and refused on the basis of two Spanish registrations for FLEX and swan device for the same type of goods. Koubi appealed to the Court of First Instance.

The court dismissed the appeal and refused registration. It noted that the relevant market was the Spanish consumer of bedding and bedroom furniture. It examined the prior registered FLEX marks holding that the word 'flex' was the dominant element, the figurative elements were negligible and the marks were not highly distinctive. The court next turned to the proposed registration and made the following points:

• The perception of a mark in the mind of a consumer plays a decisive role in the global assessment of the likelihood of confusion.
  
  
• The average consumer retains an imperfect image of a mark in his mind, which increases the importance of any elements that are particularly visible and easy to detect. In the case at hand, the term 'flex', the root of the Spanish words 'flexibilidad' and 'flexible', is such an element as it is evocative of a characteristic of the goods.
  
  
• Despite the visual and aural dissimilarity between the marks, due to the additional element 'confor', there was a strong conceptual similarity between them as they both suggest the notion of flexibility. The term 'confor' (i) refers to the notion of comfort and complements and reinforces the notion of flexibility, and (ii) is devoid of distinctive character and does not enable consumers to distinguish the marks.
  
  
• It is possible that undertakings in the relevant market use sub-brands derived from a principal mark and sharing a common dominant element to distinguish various lines. Therefore, consumers might be confused into thinking that the goods sold under the FLEX and CONFORFLEX marks belonged to two distinct ranges from the same manufacturer.

This decision may have repercussions as it indicates that it is possible to claim rights in a descriptive element (here, the term 'flex') based on registrations that are not highly distinctive. If this decision is followed, it will increase substantially the level of protection afforded to trademark registrations.

Niamh Hall, FR Kelly & Co, Dublin