Earlier mark’s weak distinctiveness insufficient to rule out likelihood of confusion

European Union
In Monster Cable Products Inc v Office for Harmonisation in the Internal Market (OHIM) (Case T-216/10, November 23 2011), the General Court has ruled that there was a likelihood of confusion between the trademarks MONSTER ROCK and MONSTERS OF ROCK.
 
The action was brought against the decision of the First Board of Appeal of OHIM dated February 24 2010, in which it was held that there was a likelihood of confusion between the marks due to the strong visual, aural and conceptual similarities between them, and the identity and similarity of the goods in question. The court ruled that the board had correctly found that there was a likelihood of confusion between the marks.

The mark for which registration was sought was MONSTER ROCK. The application covered goods in Class 9 of the Nice Classification, including "cables, wires, connectors and control devices for use with electrical, electronic and computer devices; loudspeakers; stereo amplifiers; audio equipment and accessories". The opposition was based on the mark MONSTERS OF ROCK, which covered, among other things, "apparatus for recording, transmission or reproduction of sound or images" in Class 9.

Concerning the similarity of the goods in question, the court held, firstly, that loudspeakers, stereo amplifiers, audio equipment and accessories were identical to apparatus for the recording, transmission or reproduction of sound and images. Secondly, it held that cables, wires, connectors and control devices were similar to apparatus for the recording, transmission or reproduction of sound and images.

Further, the court held that the marks showed a strong visual, aural and conceptual similarity, contrary to what applicant Monster Cable Products Inc claimed. According to the court, the marks coincided in the first seven letters of their first word, and also shared all four letters of their last word. Further, the dominant component 'monster' was likely to attract the consumers' attention and the small differences between the marks were not capable of reducing the visual similarity between them. The pronunciation of the first words of the marks was almost identical and the marks had an aurally identical ending. The court also held that the small differences between the marks were secondary and did not have a significant influence on the intonation and the rhythm of the pronunciation of the marks. 

Regarding the conceptual comparison, the court held that Monster Cable could not evidence that:
  • the public would be able to grasp the different meanings of the two marks in question; or
  • assuming that the relevant public would make a connection between the mark applied for and Monster Cable, such a connection would outweigh the visual, aural and conceptual similarities between the marks.
The court also pointed out that the distinctive character of the earlier mark was only one factor among others in the assessment of the likelihood of confusion. Even in a case involving a mark of weak distinctiveness, there may be a likelihood of confusion on account of a strong similarity between the marks and between the goods covered. In the present case, the goods were partly identical and partly similar, and the marks displayed strong similarities. Therefore, the court did not consider it necessary to refer explicitly to the earlier mark’s degree of distinctiveness. The action was thus dismissed.
 
Kirsikka Salminen, under the supervision of Sanna Aspola, Berggren Oy Ab, Helsinki

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