Even least distinctive elements must be taken into account when assessing similarity

European Union

In Tsakiris-Mallas AE v Office for Harmonisation in the Internal Market (OHIM) (Case T-244/2010, May 8 2012), the General Court has considered the distinctiveness of trademarks composed or consisting of a number.

On February 9 2007 Tsakiris-Mallas AE sought to register the following mark in Classes 18 and 25 of the Nice Classification:

Upon publication, the application was opposed by Seven SpA, the owner of the following earlier rights:

  • an Italian figurative trademark (Registration 769296) filed on July 1998, covering goods in Classes 14, 16 and 18:

  • an Italian figurative trademark (Registration 928116) filed on February 27 2004, covering goods in Classes 16, 18 and 25:

Seven requested that OHIM refuse registration of the mark pursuant to Articles 8(1)(a) and (b) (likelihood of confusion with the earlier marks) and Article 8(5) (use of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier marks) of the Community Trademark Regulation (207/2009).

The Opposition Division found that “the visual, phonetic and conceptual similarity between the signs at issue was not enough to counteract the dissimilarities existing between the figurative elements”, especially as “the weaker elements of the marks coincide”, even where the earlier marks enjoyed a reputation. Seven SpA appealed.

On March 22 2012 the Second Board of Appeal of OHIM upheld the appeal and refused registration of the mark applied for in respect of the goods in Class 18. The board found the trademarks were visually, phonetically and conceptually similar, and concluded that there was a likelihood of confusion. In contrast to the Opposition Division, which had not found it necessary to compare elements that lacked distinctive character, the board found that the element 'seven' had a certain importance in the comparison of the marks. In particular, it found that, “although the element 'seven' did not dominate the signs at issue, it was liable to make an impression on consumers and be remembered by them, and the signs at issue should be regarded as visually similar”. There was no need to rule on whether Article 8(5) was applicable.

On appeal, the General Court upheld the board's decision.

First, the court reiterated that, pursuant to settled case law, two trademarks are similar when they are at least partially identical in respect to one or more relevant aspects (see Matratzen Concord v OHIM (Case T-6/01) and Volkswagen v OHIM (Case T-317/03)).

In addition, the court found that:

although it is true that the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion,… it is only one factor among others involved in that assessment." (Paragraph 40)

There may be a likelihood of confusion, in particular on account of a similarity between the marks and between the goods or services covered, even where the earlier mark has a weak distinctive character.

The main issue that remained was whether the element 'seven' was visible and recognisable by the public. The court found that the applicant, by claiming that the mark applied for contained the number 7, written in vivid red, and the word 'seven' written in black, while the earlier marks were represented in black and white, had failed to call into question the conclusion of the Board of Appeal.

In addition, the court confirmed that, despite the very low distinctive character of the word 'seven', that element could not be regarded as completely lacking in distinctive character. In particular, the court held that:

the Board of Appeal was correct in finding that the examination of the similarity of the signs at issue had to be carried out by taking into consideration each of those signs as a whole, including their least distinctive elements.” (Paragraph 44)

Although the General Court did not address the issue of the registrability of marks consisting of numbers per se, it did set out some crucial elements that must be taken into account when comparing such marks.

Vincenzo Melilli, Bugnion SpA, Milan

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