El Corte Inglès fails in bid for MUNDICOR registration

In two joined cases, the European Court of First Instance (CFI) has dismissed appeals by Spanish department store El Corte Inglès (ECI) against decisions of the Office for Harmonization in the Internal Market (OHIM) to allow two separate oppositions to the registration of ECI's MUNDICOR mark. The CFI held that there was a likelihood of confusion with earlier MUNDICOLOR registrations.

ECI applied to the OHIM for a Community trademark registration for the word mark MUNDICOR for various services in Class 42 of the Nice Classification. The application was opposed by two separate Spanish companies. One of these companies, Spanish airline Iberia, owned the earlier Spanish mark MUNDICOLOR and an international figurative mark incorporating that word for Classes 39 and 40. The other company, González Cabello SA, opposed the mark based on its earlier registration of MUNDICOLOR for goods in Class 2. The OHIM allowed both oppositions and ECI appealed to the CFI.

The CFI rejected the appeals. It dismissed ECI's argument that the earlier marks had not been used as registered. It noted that ECI had failed to bring this claim before the OHIM during the course of the opposition proceedings and therefore could not raise the issue of use before the court at that stage. The CFI also upheld the OHIM's analysis of the likelihood of confusion between MUNDICOR and the two sets of MUNDICOLOR marks.

It rejected ECI's argument that the difference in the length of the marks was sufficient to dispel any likelihood of confusion. The CFI stated that, in the minds of Spanish consumers, the MUNDICOR and MUNDICOLOR marks looked and sounded very similar. It also felt that there were not enough conceptual differences between the marks to neutralize the visual and aural similarities.

Andrew Bennett, Hammonds, London