FAMOUS and UNFAMOU$ are not similar, says OHIM
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In Nick & Sons SRL v Nasrallah Nasrallah (Opposition 859 639, April 28 2009), the Opposition Division of the Office for Harmonization in the Internal Market has held that there was no likelihood of confusion between the marks FAMOUS and UNFAMOU$, even though the goods covered by both marks were identical.
Italian company Nick & Sons SRL sought to register a figurative sign as a Community trademark for goods in Classes 18, 24 and 25 of the Nice Classification. The mark consisted of the word 'unfamous', the first letter being partially covered by a star and the last letter having been replaced by the dollar symbol.
Nasrallah Nasrallah opposed the application based on a French registration for the trademark FAMOUS for goods in Classes 18 and 25. The Opposition Division stated that the goods covered by both marks were identical. However, surprisingly, it found that there was no likelihood of confusion between the marks.
First, the Opposition Division held that the signs were dissimilar from a visual point of view. The Opposition Division found that although five letters of the marks ('famou') coincided, the marks differed in the prefix 'un' at the beginning of the mark applied for and the dollar symbol at the end. Moreover, the UNFAMOU$ mark was written in white capital letters filled with text.
Second, the Opposition Division found that the marks had a low degree of aural similarity because:
- the prefix 'un' is significant in the pronunciation of the mark applied for; and
- the FAMOUS mark is pronounced as two syllables, while the UNFAMOU$ mark is pronounced as three.
From a conceptual point of view, the Opposition Division held that the marks had no meaning in France.
In making its global assessment, the Opposition Division regarded as relevant the fact that the main visual and aural differences were placed at the beginning of the marks. The Opposition Division found that the term 'famous' was not the dominant element of the mark applied for. According to the Opposition Division, 'un' will not be understood by French consumers as a prefix, but as an addition creating a different invented word. As a result, the Opposition Division concluded that the visual and aural dissimilarities between the marks were sufficient to counteract the visual and aural similarities.
The analysis of the Opposition Division is open to criticism. Arguably, it cannot be ignored that the term 'famous' is the dominant element of both marks. The figurative elements of the UNFAMOU$ mark all are minor in terms of size. They serve only decorative purposes and do not alter the immediate perception of the term 'famous'.
Moreover, it may be argued that even French consumers with a limited knowledge of the English language know that 'un' is a privative prefix. Finally, the Opposition Division did not take into account the fact that the goods at issue were identical, which would have weighed in favour of a finding of likelihood of confusion.
Should the reasoning of the Opposition Division be confirmed, it would substantially and dangerously reduce the scope of protection afforded to mark owners. Arguably, the mere addition of limited decorative features and the prefix 'un' should not have detracted from the fact that the UNFAMOU$ mark contained the FAMOUS mark in its entirety and that both marks covered identical goods.
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris
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