GALVALLOY and GALVALLIA are confusingly similar, says CFI
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In Usinor SA v Office for Harmonization in the Internal Market (OHIM) (Case T-189/05, February 14 2008), the Court of First Instance (CFI) has annulled a decision by the Board of Appeal of OHIM in which the latter had upheld an opposition to the registration of the word mark GALVALLOY as a Community trademark.
In 1998 Corus UK Ltd applied to register the word mark GALVALLOY as a Community trademark for goods in Class 6 of the Nice Classification, including "steel sheet and strip, steel sheet and strip having a protective coating". Usinor SA (previously Sollac) opposed the application on the grounds that there was a likelihood of confusion with its earlier French trademark GALVALLIA for "metals, in particular steel sheets coated with an iron-zinc alloy" under Article 8(1)(b) of the Community Trademark Regulation (40/94).
The Opposition Division of OHIM allowed the opposition, holding that there was a likelihood of confusion between GALVALLOY and GALVALLIA on the part of the relevant French public for all the goods covered by the opposition. The Board of Appeal of OHIM overturned the decision, holding that despite the identical nature of the goods and the visual similarity, there was no phonetic and conceptual link between the two marks. It held that the relevant French public consisted of "particularly attentive professionals" who would not be confused. The board also referred to the very low level of distinctiveness of the earlier mark and the particularities of the international steel market. Usinor appealed to the CFI.
The CFI allowed the appeal, holding that there was a likelihood of confusion between the marks GALVALLOY and GALVALLIA on the part of the relevant public. The identical nature of the goods was not in dispute, given that the goods covered by the mark applied for were among the goods in respect of which the earlier trademark was registered. As a result, the CFI focused on the comparison between the conflicting signs.
The CFI attached particular significance to the relevant public and the special characteristics of the market in question. It held that the relevant public was made up of a limited number of professionals specializing in the French special steels industry market. The relevant public had a high level of knowledge of the market and paid particular attention to the choice of products offered by each manufacturer.
The CFI also considered the visual, phonetic and conceptual similarity between the marks. As regards the visual comparison, the CFI held that the marks were globally very similar, as they differed only in the last two of their nine letters. With regard to the phonetic comparison, the CFI held that the conflicting signs were also globally similar. The word 'alloy' in English was considered to be familiar to the relevant French public. The CFI found that because the steel market is highly international, the Board of Appeal had erred in taking into account only the French rules of pronunciation. According to the CFI, the relevant French public would recognize the English word 'alloy' as a reference to the French 'alliage', which is the exact translation of 'alloy'. Further, the signs were of the same length and were pronounced with the same rhythm according to both English and French rules. The prefix 'galva' was identical in both marks and the last syllable sounded similar.
In addition, the CFI found that there was a conceptual similarity between the marks. According to the case law of the European Court of Justice, the average consumer, when perceiving a word sign, breaks it down into its verbal elements so as to perceive a concrete meaning. The prefix 'galva' was likely to have a suggestive meaning in both signs, to the effect that the goods had undergone a process of galvanization. Moreover, the board had failed to take into consideration the overall perception of the marks. In conclusion, as the relevant French-speaking public had knowledge of the English language and would understand that 'allia' was a reference to the word 'alliage', the marks were conceptually similar as they both evoked the terms 'galvanization' and 'alloy'.
The CFI also stated that the fact that the earlier mark GALVALLIA had a weak distinctive character did not mean that the similarity between the marks at issue should be disregarded. Otherwise, the obligation under Article 8(1) of the regulation (ie, make a global assessment of the likelihood of confusion) would not be complied with.
The CFI ruled that since the goods in question were identical and there were significant visual, phonetic and conceptual similarities between the marks, there would be confusion as to the origin of the products. Even an attentive public could perceive the mark GALVALLOY as a simple translation of the previous trademark GALVALLIA. For these reasons, the court annulled the Board of Appeal’s decision.
This is perhaps one of the rare cases in which the CFI has held that there is likelihood of confusion even though the relevant public is attentive and specialized. In the court’s view, members of the specialist and highly attentive public had sufficient knowledge of the relevant terms so as to become confused by their appearance in the opposing trademarks, despite the fact that - as specialists - they were arguably better equipped to understand the differences between them.
Aristeidis Papathanasiou, Hammonds LLP, London
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