Decision shows decisive impact of figurative elements in comparison of signs

In Mega Brands International, Luxembourg, Zweigniederlassung Zug v Office for Harmonisation in the Internal Market (OHIM) (Joined Cases T-604/11 and T-292/12, February 4 2014), the General Court has annulled a decision of the Fourth Board of Appeal of OHIM concerning a figurative trademark (Case T-604/11).

The court decided to join Cases T-604/11 and T-292/12, given that the parties and the marks on which the oppositions were based were the same, while the contested marks were similar.

The applicant, Mega Brands International, Luxembourg, Zweigniederlassung Zug, had filed two trademark applications with OHIM:

• one for the logo mark depicted below (Case T-604/11):
  


• the other for the word mark MAGNEXT (Case T-292/12).

Both were opposed by Diset SA based on the earlier Spanish word mark MAGNET 4 and the figurative Community trademark DISET MAGNETICS:

However, in each case the examination of the opposition was conducted - first by the Opposition Division and subsequently by the Board of Appeal - solely on the basis of the first of those two marks.

The contested applications had been filed in respect of “toys and playthings, in particular multi-part construction toys, their parts, their accessories and their fittings” in Class 28 of the Nice Classification, while the MAGNET 4 mark covered “games, toys, gymnastic and sports articles not included in other classes; decorations for Christmas trees”, also in Class 28.

Both the Opposition Division and the Board of Appeal held that there was a likelihood of confusion with the earlier MAGNET 4 mark in both cases. While the risk of confusion/association was more evident with respect to the applicant's word mark, such risk was also found to exist in the case of the logo mark. In this respect, OHIM - in contrast to the General Court - did not attach importance to the different graphical representations of the elements ‘mag’ and ‘next’, or to the prominence of the letter 'X'.

On appeal, the General Court found that the applicant's figurative mark differed, globally, from the earlier MAGNET 4 mark, since the figurative mark was “clearly divided into two parts”, and in view of the phonetic and visual impact of the stylised letter 'X'. In accordance with settled case law, the principle of 'overall assessment' is not at odds with the practice of attaching greater importance to the dominant elements of the marks, as these will more readily attract and retain the attention of consumers. In this regard, the decision confirms that the overall assessment of signs is not an abstract concept.

It is precisely because the figurative elements of the logo mark made the different components of that sign stand out (thereby creating an effect that was not found in the word mark) that the applicant managed to prevail before the General Court in Case T-604/11 and have OHIM's decision with regard to the logo mark annulled. Another conclusion that may be drawn from this case is that a figurative sign may have a significant distinguishing capacity. Although the two contested marks were phonetically identical, the General Court found that there was no likelihood of confusion in the case of the logo mark given the importance of its figurative elements. Community trademark applicants who, following an availability search, find that earlier marks are similar to their proposed sign should bear this in mind.

The General Court also agreed with the applicant - contrary to the position taken by OHIM - that the distinctive character of the opponent's MAGNET 4 mark was lower than average. The court noted that the word 'magnet', considered in relation to games and toys in Class 28, made direct reference to magnetic properties. The MAGNET 4 mark was thus weak.

The General Court dismissed the appeal in Case T-292/12, confirming that there was a likelihood of confusion between the two word marks, but annulled the Board of Appeal's decision in Case T-604/11 and referred the matter back to the board. The court noted that, in Case T-604/11, the board had not examined the opposition from the perspective of the figurative mark DISET MAGNETICS. In this respect, the General Court pointed out that it may review the legality of the decisions of the Boards of Appeal, but that the scope of its analysis is restricted to situations in which the case has reached a stage permitting appropriate final judgment to be given for judicial adjudication. This shows that the General Court will not reduce the possibilities of appeal normally available to the parties, as it does not rule on issues that OHIM has not previously addressed.

The judgment is in line with the relevant case law and allows practitioners to draw several important conclusions.

Luis Soriano, Elzaburu, Madrid