'Fit' has limited distinctive character with regard to Class 25 goods

In Coin SpA v Office for Harmonisation in the Internal Market (OHIM) (Case T-272/11, February 1 2013), the General Court has held that the Board of Appeal of OHIM had erred in rejecting Coin SpA’s opposition against Dynamiki Zoi AE’s Community trademark (CTM) application for FITCOIN, holding that there was a likelihood of confusion with Coin’s earlier figurative trademarks COIN under Article 8(1)(b) of the Community Trademark Regulation (40/94) (now Article 8(1)(b) of the Community Trademark Regulation (207/2009)).

On April 27 2004 Dynamiki filed an application for registration of the CTM FITCOIN (word mark) for the following goods and services:

• Class 16 - "paper, cardboard and goods made from those materials; pamphlets, newspapers and periodicals, books; bookbinding material; photographs; stationery, adhesives for stationery; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); printers’ type; printing blocks";
• Class 25 - "clothing, including footwear and slippers";
• Class 28 - "games and playthings; gymnastic and sporting articles (except clothing); playing cards";
• Class 35 - "advertising, business management, business administration, office functions, stocking a variety of goods on behalf of third parties so that customers can examine at their leisure and buy the goods";
• Class 36 - "insurance, financial affairs, monetary affairs, real estate affairs"; and
• Class 41 - "education, providing of training, entertainment, sporting and cultural activities, gymnasiums; providing information on the aforesaid services via the Internet".

On December 30 2005 Coin filed a notice of opposition against the registration of Dynamiki’s FITCOIN mark in respect of all the goods and services covered by the application based on Coin’s earlier figurative marks - registered as national Italian trademarks, CTMs and international trademarks designating different European countries - in Classes 16, 25, 28, 35, 36 and 41, among others:

By decision of July 9 2007, the Opposition Division found that there was no likelihood of confusion within the meaning of Article 8(1)(b) of the regulation and rejected Coin’s opposition.

On April 15 2008 the First Board of Appeal of OHIM dismissed Coin’s appeal. When analysing the similarity of the signs and the likelihood of confusion, the board took into account only the earlier Italian figurative trademarks, and stated that the relevant public was the Italian general public, which had a varying degree of attentiveness. The board concluded that, assessed globally, the signs at issue were not similar and, therefore, there was no likelihood of confusion within the meaning of Article 8(1)(b).

Coin brought an action against the board’s decision before the General Court. In its judgment of April 21 2010, the court annulled the board’s decision, finding that the latter had erred in concluding that there was no likelihood of confusion between the marks by only taking into account Coin’s earlier Italian marks, even though Coin had, in support of its opposition, also invoked earlier trademarks enjoying protection outside Italy (Case T-249/08). 

On February 21 2011 the Second Board of Appeal upheld Coin’s opposition in part. The board found that:

• there was identity between the goods and services covered by the mark applied for and those covered by some of Coin’s marks; and
• the marks at issue were visually different and phonetically similar to a weak degree.

Conceptually, the board noted that the word 'coin' would be understood by English-speaking consumers as meaning “a metal disc used as money” and by French-speaking consumers as “place, corner”; the word 'fit' was an English word meaning “to be of the correct size or shape” or “in good health”. Against this background, the board considered that some of the relevant consumers could perceive the element 'fitcoin' as a juxtaposition of the words 'fit' and 'coin', whereas other consumers could perceive the mark FITCOIN as a word with the prefix 'fit', as a word with the suffix 'coin', or as an invented word lacking any meaning.

For the relevant consumers who would perceive the element 'fitcoin' as the juxtaposition of the words 'fit' and 'coin', the board found that – as the word 'fit' means “in good health” and is widely used in the sporting sector – the word 'fit' had a limited distinctive character in relation to goods or services linked to sport and fitness activities. Consequently, there was a likelihood of confusion for goods and services in Classes 28 ("gymnastic and sporting articles (except clothing)") and 41 ("sporting and cultural activities, gymnasiums; providing information on the aforesaid services via the Internet"). The board thus upheld the opposition with regard to these goods and services.

On February 1 2013 the General Court stated that the board had erred in rejecting Coin’s opposition with regard to “clothing, including footwear and slippers” in Class 25. The word 'fit', in the sense of “to be of the correct size or shape”, had a limited distinctive character as regards the “clothing, including footwear and slippers” in Class 25. Consequently, the similarity between the marks at issue due to their common element 'coin' was not counteracted by the presence of the element 'fit' in the mark applied for by Dynamiki. On the other hand, the board was correct in rejecting Coin’s opposition as to the remainder as the word 'fit' could not be regarded as frequently used in relation to the other goods and services applied for in Classes 16, 28, 35, 36 and 41, and the word 'fit' had the necessary distinctive character when it was used in relation to those other goods and services.

Consequently, Coin’s action was partly upheld.

Nina Ringen, Rønne & Lundgren, Hellerup