Court reaches conclusion in opposition proceedings without examining marks

European Union
It is established case law that, in cases involving potentially similar trademarks, the interdependence between the similarity of the marks and that of the goods and services covered must be examined. In Perusahaan Otomobil Nasional Sdn Bhd v Office for Harmonisation in the Internal Market (OHIM) (Case T-581/08, September 27 2011), the General Court, while reiterating this principle, has decided the case only on the basis that the goods at issue were not similar. It held that it could arrive at a conclusion “without it being necessary to examine the signs at issue or to analyse the alleged distinctiveness of the earlier marks” (Paragraph 30). The Board of Appeal of OHIM had previously reached the same conclusion.

The opponent in this case was Perusahaan Otomobil Nasional Sdn Bhd, which owned the Community word mark PROTON (Registration 198564), as well as the following Community figurative mark (Registration 1593201):


Perusahaan opposed an application by Proton Motor Fuel Cell GmbH for the registration of the following mark:


The earlier trademark covered "motor land vehicles" and "repair and maintenance of motor land vehicles" in Classes 12 and 37 of the Nice Classification, while the trademark applied for covered "electric drives with proton exchange membrane fuel cells" in Class 7, "proton exchange membrane fuel cells" in Class 9 and "development of systems for the conversion of energy using proton exchange membrane fuel cells" in Class 42.

The court held that the goods and services covered by the marks were not similar, even though the applicant argued that the goods and services covered by the mark applied for were also of interest to the automotive industry. The court made the fine distinction that the public targeted by the earlier trademarks consisted of average consumers, whereas the public targeted by the trademark applied for consisted essentially of automotive research centres, scientists and engineers and, possibly, vehicle manufacturers.

To corroborate this approach, the court stated that the proton exchange membrane technology, which was covered by the trademark applied for, is “something which is not yet used by the automotive industry and is not yet accessible to the average consumer” (Paragraph 26). This is a very narrow viewpoint, because the reference to the fact that this technology is not yet used by the automotive industry indicates that it may well be used by that industry in the future. It is not convincing that a technical development which is already foreseeable should be disregarded completely on the grounds that, at the present time, it does not reflect the state of the art.

Perusahaan also relied on the reputation of its marks in the United Kingdom, but had not submitted corroborating evidence to OHIM. In compliance with the applicable case law, the General Court disregarded further evidence submitted to it in this respect. The court also stressed that the fourth condition for the application of Article 8(5) of the Community Trademark Regulation (40/94) (ie, use of the mark applied for would be without due cause and would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark) had not been met.

Although the decision seems coherent, as the opponent had failed to prove its case sufficiently, it is not entirely satisfactory that the existence of the earlier PROTON marks could not prevent the registration and use of a trademark whose dominant element is the word 'proton'.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna

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