FIRST-ON-SKIN is confusingly similar to FIRST, says CFI

European Union
In X-Technology R & D Swiss GmbH v Office for Harmonization in the Internal Market (OHIM) (Case T-273/08, October 28 2009), the Court of First Instance (CFI) has upheld a decision of the Board of Appeal of OHIM in which the latter had found that the mark FIRST-ON-SKIN was confusingly similar to the earlier mark FIRST.
X-Technology R&D Swiss GmbH filed an application for the registration of FIRST-ON-SKIN as a Community trademark for various goods in Class 25 of the Nice Classification (clothing). Ipko-Amcor BV lodged an opposition based on its Benelux registration for the trademark FIRST for goods in Class 25. The Opposition Division of OHIM rejected the opposition. However, the Board of Appeal upheld the opposition, finding that the marks were confusingly similar. X-Technology appealed to the CFI. 
X-Technology claimed that FIRST-ON-SKIN should be considered as a unit (or even as a one-word mark), as all three components could not be separated and were linked by the two hyphens. X-Technology believed that its mark, taken as a whole, could not be confused with the FIRST mark. X-Technology also pointed out the weak distinctive character of the word 'first', which is a basic term of the English language. X-Technology argued that the word 'first' did not have an independent distinctive role in the FIRST-ON-SKIN mark and that the opposition should thus be dismissed under the THOMSON LIFE decision (Case C-120/04)). X-Technology also referred to 924 other marks containing the word 'first' that were registered in Benelux.
The CFI first confirmed that the goods were identical, which was undisputed. The CFI then stated that two marks may be found to be similar if they have at least one component in common. It also referred to earlier decisions in which it was held that where the earlier mark is entirely contained in the later mark, the marks may be found to be similar. Within this context, the CFI held that 'first' was the only component of the earlier mark and the first component of the mark applied for, in which the three components were “linked by hyphens”. The court then stated that the first word of a mark dominates the overall impression conveyed by the mark, as it is placed at the beginning and is more likely to attract the attention of consumers. The CFI thus concluded that 'first' was the dominant element of the FIRST-ON-SKIN mark, even though the three elements of the marks were linked by hyphens.
The CFI then turned to the visual comparison of the marks. It conceded that the marks had different lengths, as they contained a different number of letters. However, it pointed out that the earlier mark FIRST was entirely contained in the mark applied for and that 'first' was the dominant element of that mark. The court further stated that the additional elements 'on' and 'skin' were insufficient to outweigh the similarity between the marks. Interestingly, in comparing the marks from a visual point of view, the CFI noted that the elements of the FIRST-ON-SKIN mark were “separated by hyphens”. The CFI further stated that the use of hyphens and capital letters in the mark applied for (First-On-Skin) was insufficient to avoid a likelihood of confusion.
From a phonetic point of view, the CFI held that the marks FIRST-ON-SKIN and FIRST were similar - despite the fact that they had different lengths and a different number of syllables - because:

  • the FIRST mark was entirely contained in FIRST-ON-SKIN; and
  • 'first' constituted the dominant element of FIRST-ON-SKIN.
The CFI was of the opinion that even if the FIRST-ON-SKIN mark was pronounced as one unit, it was still phonetically similar to the FIRST mark.
Turning to the conceptual comparison of the marks, the CFI held that 'first' was a basic word of the English language which was known and understood by the majority of the relevant public in Benelux. The court believed that FIRST-ON-SKIN would be understood as referring to the first article of clothing that touches the skin or the item of clothing that feels the best on the skin. The CFI thus concluded that the marks were almost identical - the presence of the additional components 'on' and 'skin' did not change that finding. The CFI pointed out that companies offering goods in Class 25 often sell different lines of products under variations of the original mark. Therefore, consumers would not perceive the additional components 'on' and 'skin' as distinguishing the goods of a different company.
Moreover, the CFI rejected X-Technology's argument that 'first' had a weak distinctive character, holding that this fact did not prevent a finding of likelihood of confusion. The CFI also held that the additional components 'on' and 'skin' were weaker than 'first', and stated that X-Technology's interpretation of THOMSON LIFE was erroneous. Finally, the CFI rejected X-Technology's argument that there were many other marks containing 'first' in Benelux, as X-Technology had failed to show that these marks were valid and in use.
The CFI thus concluded that there was a likelihood of confusion between the marks and dismissed the action.

The decision of the CFI in this case is surprising. The CFI did not take into account the fact that:

  • FIRST is one of the weakest marks in the European Union and has been rejected many times as being merely descriptive; and 
  • the word 'first' is contained in many other marks.
Moreover, there are a number of contradictions in the decision: for example, the CFI first stated that the elements 'first', 'on' and 'skin' were “linked by hyphens”, but later said that they were "separated by hyphens". Arguably, the CFI should have easily concluded that there was no likelihood of confusion between the marks, even though the FIRST mark is entirely contained in FIRST-ON-SKIN. The decision thus makes it more difficult to predict the outcome of similar cases.
Carsten Albrecht, FPS Rechtsanwälte & Notare, Hamburg

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