General Court assesses impact of IP TRANSLATOR on marks registered prior to decision

In Chair Entertainment Group LLC v Office for Harmonisation in the Internal Market (OHIM) (Case T-717/13), which concerned whether there was a likelihood of confusion between the trademarks SHADOW COMPLEX and BusinessShadow for goods in Class 9 of the Nice Classification, the General Court has examined the impact of the IP TRANSLATOR decision on the specification of trademarks registered prior to the date of that decision.

On February 29 2009 Chair Entertainment Group LLC filed a Community trademark application for SHADOW COMPLEX in Class 9 for "computer game software for personal computers and home video game consoles". The application was opposed by Libelle AG, based, among other things, on a Community trademark for BusinessShadow, registered on September 13 2005 for "computer software (recorded)". On February 14 2011 the Opposition Division of OHIM found that there was a likelihood of confusion between the two marks, and refused Chair Entertainment's application in accordance with Article 8(1)(b) of the Community Trademark Regulation (207/2009).

Chair Entertainment's appeal against this decision was rejected by the Second Board of Appeal of OHIM on October 1 2013. The Board of Appeal found that there was a likelihood of confusion at least amongst the English-speaking average consumers. The marks were considered to have a low degree of visual and phonetic similarity due to the presence of the word 'shadow', which was the dominant element of both marks. The goods concerned were considered identical. Chair Entertainment challenged the Board of Appeal's findings before the General Court.

The court began by reviewing the Board of Appeal's findings in respect of the assessment of the average consumer. Chair Entertainment argued that the Board of Appeal had failed to take into account that the relevant public is made up of younger consumers and technology professionals, which would mean that the average consumer had an above-average level of attention to the marks. The court did not dispute that these groups would form part of the relevant public, but considered that the goods covered by the earlier mark were also aimed at the general public. Where the relevant public is made up of a number of different groups, the public with the lowest level of attention should be taken into account (Ergo Versicherungsgruppe v OHIM (Case T-220/09)).

Chair Entertainment challenged the Board of Appeal's assessment that the goods concerned were identical. Chair Entertainment's argument centred on Communication No 2/12 concerning the use of class headings in lists of goods and services for Community trademark applications and registrations, which was issued following the court's decision in Chartered Institute of Patent Attorneys (Case C-307/10), more commonly known as the IP TRANSLATOR decision. Paragraph V of the communication provides that, where a mark was registered prior to the date of the communication which includes a general indication of a particular Nice Classification class heading, the mark will be deemed to be registered for all of the goods or services included in that particular class. Applying this approach, the Board of Appeal found that the goods applied for were identical to the goods specified in Libelle's registration, which included software.

Chair Entertainment maintained that the Board of Appeal's approach was consistent with the communication, but was contrary to the principles set out by the court in IP TRANSLATOR, as the Board of Appeal should have assessed the identity of the goods based on the literal meaning of the specification. Chair Entertainment contended that this should be limited to "complex software for the protection of databases and file systems". The court disagreed. It considered that "computer software (recorded)" was sufficiently clear and precise and that the Board of Appeal was correct in determining that the reference to the class heading "computer software" should be interpreted as including all of the goods within that class. This was consistent with the principles in IP TRANSLATOR and the principle of legal certainty, affirming the court's previous decision in Scooters India Ltd v OHIM (Case T-51/12).

In assessing the similarity of the marks, the court held that 'shadow' was the distinctive element of both and that the Board of Appeal was entitled to find that the marks were conceptually similar. The Board of Appeal had found that the marks were of low visual and phonetic similarity, which was not challenged by Chair Entertainment. The court nevertheless assessed the visual and phonetic similarity of the marks as average, taking into account the shared distinctive element 'shadow'. The court concluded that the Board of Appeal was correct in finding that there was a likelihood of confusion between the marks.

The class heading for Class 9 of the Nice Classification includes the term 'computer software'. Chair Entertainment's appeal was essentially based on the argument that the Board of Appeal should have limited the interpretation of the goods to a narrower specification ("computer software (recorded)") than all those falling under the general designation "computer software". The scope of the specification of pre-IP TRANSLATOR trademarks remains open to interpretation by OHIM through the application of the principles of IP TRANSLATOR and Communication No 2/12. This case demonstrates that this may result in a broad interpretation of a specification for a trademark registered prior to IP TRANSLATOR. Proprietors of such trademarks should also be aware of the potential consequences of this in respect of actions for revocation due to non-use of the trademark.

Leigh Smith, Clifford Chance LLP, London