EXÉ found similar to EXE despite restriction of goods

In Tsakiris-Mallas v Office for Harmonization in the Internal Market (OHIM) (Case T-96/06, September 10 2008), the Court of First Instance (CFI) has held that there was a likelihood of confusion between the figurative mark EXÉ and the earlier word mark EXE.
Applicants might be tempted to exclude specific goods or services from their trademark applications in order to circumvent earlier trademark registrations disclosed in availability searches. However, such restrictions might prove to be inefficient in opposition or cancellation proceedings.
Tsakiris-Mallas EPE applied for the registration of the figurative mark EXÉ as a Community trademark for goods in Classes 18 and 25 of the Nice Classification (including “leather articles and bags” and “men’s and women’s shoes”).
Late Editions Ltd opposed the application based on its earlier word mark EXE, which is registered in the United Kingdom for goods in Class 25 (“clothing, except shoes”). The Opposition Division upheld the opposition only with regard to certain goods (including shoes). The Board of Appeal of OHIM affirmed the decision of the Opposition Division. Tsakiris-Mallas appealed to the CFI.
The CFI held that the figurative mark EXÉ and the registered word mark EXE were confusingly similar, especially with regard to “men’s and women’s shoes” and “clothing, except shoes” in Class 25.
The decision of the CFI on the similarity of the marks was quite predictable. The CFI found that the Board of Appeal had correctly refused to take into consideration the slight visual differences between the marks (ie, the black background and the accent on the letter ‘E’ in the figurative mark).
However, the reasoning of the CFI concerning the comparison of the goods was more interesting. The goods covered by the EXÉ mark (including “men’s and women’s shoes”) were held to be similar to those covered by the earlier mark (“clothing, except shoes”).
Usually, the position of OHIM is that where a contested trademark excludes specific goods or services, the excluded goods or services must be compared with those covered by the earlier mark. Therefore, the restriction is generally not taken into account in order to assess the similarity of the marks.
In one instance, OHIM did not take into consideration the restriction included in the application for the registration of the contested mark (“components for pharmaceutical preparations and substances, these goods excluding dietetic products for medical use”) and held that the goods were similar to those covered by the earlier mark (“dietetic products for medical use”) (Opposition B 893 554, February 29 2008).
In another instance, OHIM concluded that the services covered by the earlier mark (“air ticketing services”) were similar to those covered by the contested application (“travel arrangement for people with reduced mobility, excluding airline ticketing; escorting of travellers; travel guide and travel information services, excluding airline ticketing”) (Opposition B 1 169 467, August 28 2008).
However, in the present case, the difference was that the restriction had been included by the opponent, Late Editions, before the filing of the contested application. Although Late Editions clearly did not want to protect its trademark for shoes, it still opposed the application for the registration of a similar mark for shoes.  
Unsurprisingly, the CFI held that “clothing” and “shoes” were similar on the grounds that both types of goods:
  • are fashion articles;
  • are sold through the same channels; and
  • are often manufactured by the same companies.
In addition, the CFI found that “leather articles and bags” were similar to “clothing, except shoes” on the grounds that these goods:
  • are accessories intended to cover the human body;
  • contribute to enhance the consumer’s image; and
  • are sold through the same channels.
The decision clearly shows that the most reliable means of overcoming an earlier registration for an identical or similar mark is to obtain the consent of the trademark owner, as a restriction in the specification of the goods will have no effect on the overall likelihood of confusion.
However, parties are more likely to enter into consent or coexistence agreements where the specification of the goods covered by the trademark applied for includes a specific restriction. Moreover, such restrictions may help the parties to settle disputes.
Séverine Fitoussi and Jean-Philippe Bresson, Inlex Conseil, Paris

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