Deciphering the code: General Court analyses specialised electronic accessories

In Hand Held Products Inc v Office for Harmonisation in the Internal Market (OHIM) (Case T-361/11, July 12 2012), the General Court has considered OHIM’s earlier decision that "barcode and image scanners and related software" were not similar to "telecommunications systems and installations; interactive terminals for displaying and ordering goods and services; electrical and electronic accessories" (Case R 1443/2010-1).

In 2006 Orange Brand Services applied to register the trademark DOLPHIN in respect of "telecommunications systems and installations; interactive terminals for displaying and ordering goods and services; electrical and electronic accessories" in Class 9 of the Nice Classification. Hand Held Products Inc subsequently opposed this application on the basis of its pre-existing Community registration for an identical mark in respect of "barcode and image scanners and related software for use therewith". These goods were defined as optical scanning devices designed to read information printed in the form of bars and to transmit that information to a computer or computer network.

The Opposition Division of OHIM initially rejected the opposition. On appeal, the First Board of Appeal similarly concluded that the goods in question were not sufficiently similar.

It therefore fell to the General Court to consider the intricate particulars of the goods in order to determine whether in fact barcode and image scanners were similar to the goods for which Orange Brand Services was seeking registration.

The General Court first examined the precise nature and purpose of the respective goods, as well as whether they were complementary to, or in competition with, one another. As a result of such analysis, the General Court held that OHIM was correct in finding "barcode and image scanners and related software" not similar to "telecommunications systems and installations and interactive terminals for displaying and ordering goods and services". However, the General Court also found that, with regard to "electrical and electronic accessories", OHIM had erred in finding dissimilarity.

In determining that "telecommunications systems or installations" and "barcode and image scanners" were dissimilar, the General Court defined the former as “a system in which electric or electromagnetic signals are used to transmit information by means of radio, light, waves or cable”. In addition, these systems include the transmission of data between computer networks. Therefore, these goods were considered to have a much broader use and purpose than barcode and image scanners.

Further, the intended users of the respective goods were considered entirely different, with "telecommunications systems" being for general use and "barcode and image scanners" being intended for use by storage and sales professionals. Thus, the essential characteristics of the goods were considered sufficiently dissimilar to the extent that there could be no similarity between the respective goods. The General Court therefore agreed with OHIM’s finding of dissimilarity.

The court then turned to "interactive terminals for displaying and ordering goods and services". These specific goods were defined as terminals allowing interaction between the user and the computer and were considered to be primarily intended for use by the general public. As the specific purpose of the interactive terminals is to enable the general consumer to access information about goods and services, it was considered that the nature and purpose of these goods are different to barcode and image scanners. Moreover, the fact that certain interactive terminals for displaying and ordering goods and services may also include a barcode scanner “does not remove the essential differences between them in terms of their method of use and intended purpose”.

Therefore, as the goods had different intended users and methods of use, and were neither substitutable nor in competition with one another, the General Court also upheld OHIM’s finding that the goods were not similar.

Finally, in determining whether "barcode and image scanners" are similar to "electrical and electronic accessories", the General Court considered all of the relevant factors and ultimately held that OHIM had erred in their finding that these goods were dissimilar.

In considering this matter, the General Court also considered the precise nature and purpose of barcode and image scanners, and highlighted the fact that these goods are not standalone devices but are in fact accessories to main devices. Without such main devices, the barcode and image scanners would not function and would serve no purpose. Similarly, electronic apparatus were defined as “something added to a machine [or to clothing], which has a useful or decorative purpose”. This definition was found to be wholly consistent with that of barcode and image scanners and, as such, the General Court found that the goods were similar.

In its conclusion, applying the interdependence principle, the court found that OHIM was partially correct in rejecting the opposition. With reference to "telecommunications systems and installations" and "interactive terminal for displaying and ordering goods and services", the dissimilarity between these goods offset the identity between the marks. Therefore, a global assessment indicated that there was no likelihood of confusion.

However, as the General Court found similarity between "barcode scanners" and "electronic accessories", there could be no such offset. As such, the identity of the marks, coupled with the similarity of goods, indicated a real risk that the public may consider the goods to emanate from the same source or from an economically linked undertaking. Therefore, the appeal was upheld with regard to "electrical and electronic accessories" only.

This decision acts to reiterate the factors to be considered when undertaking a comparison between goods and services, including, among others, their nature, intended purpose, method of use and whether they are in competition with each other or are complementary. The decision also highlights that, even where a product contains, or consists of, another product or piece of technology, the respective goods will not automatically be considered similar overall, providing that the method of use, purpose and essential characteristics of the goods differ.  

Shauna Tilley, FRKelly, Dublin