DOR and COR marks unlikely to cause confusion

In Henkel KGaA v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance has upheld a decision to dismiss an opposition against Henkel KGaA's application to register the mark COR in block capitals for goods in Class 3 of the Nice Classification. The CFI held that there was no likelihood of confusion between the proposed registration and the opponent's DOR mark in gothic script.

In coming to this conclusion, the court made the following findings:

• The opponent, Serra y Roca SA (SERCA), argued that at the time of the registration of its prior national German trademark DOR in 1935 and until the year 1941, gothic script was the official script form in Germany, and therefore its mark should be considered as equivalent to a registration in block capitals. Following the reasoning put forward by OHIM in the contested decision, the CFI confirmed that the comparison of the signs had to be made at the time of the opposition procedure and not retroactively at the time of the registration of the older trademark.
  
  
• The CFI confirmed the general rule that in the case of conflicting trademarks made up of short words and, particularly, words of three letters only, the difference of one letter may suffice to differentiate the marks from each other. Moreover, if the different letter is the first letter, there is a higher propensity for the marks to be viewed as different from each other, unless the letters are phonetically or visually similar. The CFI held that the letters 'D' and 'C' were different visually, and taking into consideration that in the relevant market, namely Germany, the letter 'C' in Henkel's trademark would be pronounced as the letter 'K', no phonetic similarity could be assumed either.
  
  
• The court reasoned that when the trademarks at issue are likely to apply to goods sold in self-service shops, visual similarity is generally of greater importance than phonetic similarity, because the customer will choose the product upon seeing it and not as a result of a conversation with a sales person. This reasoning may lead to difficulties because a mark owner may decide to change its method of distribution or use the same trademark for other products sold in different types of outlets. It is surprising that such an argument was accepted by the CFI, particularly, since there seems to have been no actual proof presented as to how the products were actually sold. The CFI must have based its ruling on the general consideration that products in Class 3 (eg, soaps, perfumes and toothpaste) would mainly be sold in self-service shops.
  
  
• The CFI rejected SERCA's argument that even if there was no likelihood of confusion there could still be a likelihood of association. It did not accept that the concept of likelihood of association should be separated from the general test for a likelihood of confusion.
  
  
• The CFI refused to accept SERCA's evidence purporting to establish reputation in the DOR mark based on 70 years of use in Germany as SERCA had failed to submit this evidence to the lower instances at OHIM. In addition, neither OHIM's Opposition Division nor the Board of Appeal established any reputation in the DOR mark ex officio. Thus, SERCA's arguments were therefore qualified as inadmissible.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna