CTM applicants should pay attention to characteristics of sector concerned

European Union

In Nike International Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-233/10, May 25 2012), the General Court has upheld a decision of the Board of Appeal of OHIM in which the latter had found that there was a likelihood of confusion between the trademarks JUMP and JUMPMAN, which both covered goods in Class 25 of the Nice Classification.

Nike International Ltd filed an application for the registration of the mark JUMPMAN as a Community trademark for goods in Class 25, namely:

"clothing, footwear, headgear; including apparel, namely, pants, shorts, shirts, t-shirts, pullovers, sweat shirts, sweat pants, underwear, sports bras, dresses, skirts, sweaters, jackets, socks, caps, hats, visors, sweatbands, gloves, belts, hosiery, arm bands, coats, vests, jerseys, wind-resistant jackets."

Intermar Simanto Nahmias lodged an opposition based on, among others, the Spanish word mark JUMP, which covered the class heading of Class 25: "clothing, footwear and headgear".

The Opposition Division of OHIM upheld the opposition and the First Board of Appeal of OHIM confirmed. The board argued that the relevant goods were identical, since the goods specified in the application for the contested trademark were included in the class heading covered by the earlier mark. The relevant goods were similar in their nature, purpose and method of use, and were also substitutable. Further, the board was of the opinion that the marks JUMP and JUMPMAN were highly similar, as the earlier trademark was included in the contested trademark in its entirety. Therefore, the average Spanish consumer might think that the parties' goods came from the same undertaking.

The First Chamber of the General Court confirmed the board's decision based on the following findings:

  • The class heading covered all goods listed in Class 25.
  • In principle, Class 25 goods are everyday consumer goods and, therefore, the relevant public was the average consumer, who was deemed to be reasonably well informed and reasonably observant and circumspect.
  • The average consumer normally perceives a trademark as a whole, without analysing its various details. At the same time, the distinctive and dominant components of the mark must be taken into consideration.
  • The average consumer will recognise the identity of the word 'jump' in both marks, but not the additional ending 'man'. Consumers read from left to right and pay more attention to the beginning of a mark than to its ending, and also to pay more attention to similarities than to dissimilarities.
  • Even if consumers paid attention to the element 'man', they might think that the goods sold under the JUMPMAN mark are men's clothing articles offered by Intermar Simanto Nahmias. Consumers are used to sub-brands in the field of clothing, and these characteristics of the clothing sector could not be disregarded.

The decision demonstrates once again that applicants should be cautious when seeking to register a trademark that fully includes an earlier trademark, and should pay attention to the characteristics of the sector at issue. In the clothing industry, consumers are used to seeing sub-brands, as well as women's and men's collections sold under a core mark together with the words 'women' and/or 'men'. Thus, the element 'men' will, in most cases, not be able to differentiate two marks when the earlier mark is included in the later mark in its entirety.

Tanja Hogh Holub, Beiten Burkhardt Rechtsanwaltsgesellschaft mbH, Munich 

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