Durferrit fails to protect TUFFTRIDE mark

In Durferrit GmbH v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance has upheld the decision of the OHIM First Board of Appeal to reject Durferrit's opposition to the registration of Kolene Corporation's mark NU-TRIDE based on Durferrit's previously registered mark TUFFTRIDE.

Kolene, a US company based in Detroit, Michigan, registered NU-TRIDE as a Community trademark in relation to goods and services in Classes 1 and 40 of the Nice Classification, namely (i) chemical products for use in the treatment of metals, and (ii) metal treatment.

German company Durferrit, which provides similar goods and services, opposed the registration on the grounds that:

• it had registered TUFFRIDE in 1962 in a number of EU member states;
  
  
• Kolene's registration of NU-TRIDE would lead to consumer confusion; and
  
  
• it was entitled to rely on the absolute grounds for refusal of a mark as set out in Article 7(1)(f) of the Community Trademark Regulation because Kolene had registered NU-TRIDE in bad faith (ie, knowing that it was confusingly similar to TUFFRIDE).

The court rejected each of Durferrit's arguments, thereby upholding the decision of the OHIM to reject the German company's opposition. First, the court took the view that the two marks are not visually, aurally or conceptually similar. Thus, there is no likelihood of consumer confusion. The court also held that the fact that Durferrit's mark is registered in several EU member states is insufficient to demonstrate that TUFFTRIDE has a reputation in the relevant part of the European Union.

Second, the court stated that Durferrit was not entitled to rely on the absolute grounds for refusal of a mark as set out in the Community Trademark Regulation. Article 7(1)(f) provides that registration shall be denied if the mark is contrary to public policy and to accepted principles of morality. Bad-faith registration does not fall within its scope.

Patricia McGovern and Peter Bolger, LK Shields Solicitors, Dublin