General Court alters Board of Appeal's decision

European Union

In Investrónica v Office for Harmonisation in the Internal Market (OHIM) (Case T-149/12, January 16 2014), the General Court has altered a decision of the Fourth Board of Appeal of OHIM in which the latter had found that there was no likelihood of confusion between two figurative MICRO marks.

Olympus Imaging Corporation filed a Community trademark application for the figurative mark MICRO, depicted below, for "photographic apparatus and instruments, digital cameras, interchangeable lenses, and parts and accessories therefor as far as included in Class 9" of the Nice Classification.

Investrónica SA filed a notice of opposition on the basis of its earlier Spanish figurative mark MICRO, reproduced below, for "scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), lifesaving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; extinguishers" in Class 9.

By decision of December 16 2010, the Opposition Division of OHIM upheld the opposition in its entirety on the basis of Article 8(1)(b) of the Community Trademark Regulation (207/2009) and, accordingly, refused to register the application filed by Olympus. Olympus filed an appeal against the Opposition Division’s decision pursuant to Articles 58 to 64 of the regulation.

By decision of January 31 2012, the Fourth Board of Appeal of OHIM upheld the appeal in its entirety, annulled the Opposition Division’s decision, rejected the opposition and ordered the applicant to pay the fees and costs of the opposition and appeal proceedings.

In essence, the Board of Appeal concluded that the identity of the goods was offset by the dissimilarity between the signs such that there was no likelihood of confusion on the part of the public in the European Union for the purposes of Article 8(1)(b). The board found that the relevant public was composed of both professionals in the photography sector and end consumers in general, and that the relevant territory was Spain.

In reaching this conclusion, the Board of Appeal considered that, although the word element ‘micro’, which was common to the signs at issue, was pronounced in the same way, it was a descriptive element that could not be perceived by the relevant public from a visual point of view as the distinctive and dominant element of a composite mark. Further, such descriptiveness also precluded the establishment of a high level of conceptual similarity between the signs at issue. Therefore, the board considered that the distinctive character of the earlier mark was based solely on the combination of specific colours. Given the predominance of the visual perception of the marks for the goods concerned, the marks at issue were only slightly similar, the only link between them being the descriptive and non-distinctive word element ‘micro’.

Investrónica filed an appeal before the General Court seeking the reversal of the board's decision, arguing that the appeal should have been dismissed and that the Opposition Division’s decision should have been confirmed.

The General Court noted that, according to case law, a composite trademark may be regarded as being similar to another trademark which is identical or similar to one of the components of the composite mark where that component forms the dominant element within the overall impression created by the composite mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark make a negligible contribution to the overall impression created by it.

In the present case, as regards the mark applied for, the word element ‘micro’ was composed of large white capital letters that stood out on a black rectangle, and the fanciful element which preceded it was negligible. The word element ‘micro’ thus constituted the dominant element of the mark applied for.

That conclusion was not called into question by OHIM’s argument that the word element ‘micro’ is not only devoid of distinctive character, but is also descriptive. Indeed it is settled case law that the public will not generally consider a descriptive element forming part of a composite mark as its dominant element (see NewSoft Technology v OHIM (Case T-205/06), Paragraph 56, and the case law cited). However, certain circumstances may justify that a descriptive element has a dominant character (see Peek & Cloppenburg and van Graaf v OHIM (Case T-361/08), Paragraphs 59 and 60).

As regards the earlier mark, the court noted that it was composed of the single word element ‘micro’ and that, given its standard font and the slight difference between the letters in dark blue and those in light blue, the attention of the relevant public would be drawn primarily to that word and not, as incorrectly asserted by the Board of Appeal, to the particular combination of colours and letters that constitute it. It followed that the word element ‘micro’ must be regarded as the dominant element of the earlier national figurative mark.

Therefore, the court found that the marks at issue were visually highly similar.

Given, first, the findings made by the court as to the conceptual and phonetic identity of the signs at issue and their strong visual similarity and, second, the identity of the goods in question, the court found that the Board of Appeal had been wrong to find that there was no likelihood of confusion between the earlier mark and the mark for which registration was sought within the meaning of Article 8(1)(b) of the regulation.

In the light of the above, the single plea in law raised by the applicant was accepted and the board's decision was annulled.

In this respect, Investrónica had requested that the court, in essence, adopt a decision that, according to it, the OHIM should have taken, namely a decision finding that the opposition conditions had been satisfied. Consequently, Investrónica sought the alteration of the board's decision as provided for in Article 65(3) of the regulation.

The court explained that the exercise of the power to alter decisions must, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the board, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (Edwin v OHIM (Case C-263/09 P), Paragraph 72; PHARMASTREET (Case T-411/12), Paragraph 45).

In the present case, the court considered that the conditions for exercising its power to alter decisions were met. Therefore, the court considered that the Board of Appeal was required to find, in accordance with the view taken by the Opposition Division, that there was a likelihood of confusion for goods in Class 9 and corresponding to the following description: "photographic apparatus and instruments, digital cameras, interchangeable lenses, and parts and accessories therefor as far as included in Class 9".

The court’s decision highlights the potential dangers of national offices or OHIM accepting for registration descriptive word elements to the extent that they are associated with distinctive figurative elements. As stated in the decision, the result may be that registration protects not the particular combination of word and figurative elements, but rather the descriptive word element itself.

Cristina Bercial-Chaumier, Casalonga & Associés, Alicante, and Karina Dimidjian-Lecomte, Casalonga Avocats, Paris

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