General Court confirms likelihood of confusion between 'metro' marks

In AMC-Representações Têxteis Lda v Office for Harmonisation in the Internal Market (OHIM) (Case T-50/12, February 7 2013), the General Court (Fifth Chamber) has issued its decision in the dispute between AMC-Representacoes Texteis Lda, MIP Metro Group Intellectual Property GmbH & Co KG and OHIM. The court noted that the likelihood of confusion between marks, which includes a risk of association between different undertakings, must be assessed based on the global appreciation of the visual, aural and conceptual similarities of the marks in question, which in turn, must be based on the overall impression given by those marks, bearing in mind, in particular, their distinctive and dominant components.

On April 6 2009 AMC filed an application for the registration of a Community trademark (CTM) with OHIM pursuant to the Community Trademark Regulation (40/94), now the Community Trademark Regulation (207/2009). The trademark in respect of which registration was sought was the figurative mark METRO KIDS COMPANY EST 1989 for goods and services in Classes 24 ("fabrics"), 25 ("articles of clothing") and 39 ("transport, packaging and storage of leatherwear, jewellery, clothing and footwear") of the Nice Classification.

Further to the publication of the application in the Community Trademark Bulletin on June 29 2009, MIP Metro Group filed a notice of opposition, pointing out earlier rights with respect to the international figurative mark METRO, having effect in Bulgaria, the Czech Republic, Hungary, Poland, Romania, Slovenia and Slovakia, and registered on June 25 2004 in Classes 1 to 45.

By its decision of September 24 2010, the Opposition Division upheld the opposition on the grounds that there was a likelihood of confusion on the part of the target public between the goods and services covered by the application and those covered by the earlier international figurative mark. On November 23 2010 AMC filed a notice of appeal with OHIM pursuant to Articles 58 to 64 of the regulation.

On November 24 2011 the First Board of Appeal of OHIM dismissed the appeal on the grounds that:

• in the relevant territory (Bulgaria, Czech Republic, Hungary, Poland, Romania, Slovenia and Slovakia), the public consisted of the public at large in those states displaying an average level of attentiveness;
• the goods and services in Classes 24, 25 and 39 covered by the application were identical to those covered by the earlier trademark; and
• the two signs shared some similarities.

In particular, the board observed that, visually, the world 'metro' was included in full in the mark applied for and that the other word elements in that mark were not sufficiently distinctive. With respect to the aural similarity, the board found that the word element 'metro' caught more the consumer’s attention, as consumer tend to abbreviate a mark comprising different elements. For the above reasons, the board concluded that there was a likelihood of confusion and, mainly, a likelihood of association between the marks.

AMC appealed before the General Court, claiming that the board had merely considered the common element of the marks - the word 'metro' - without considering the marks as a whole. In addition, it claimed that, due to the presence of aural and visual differences between the marks which overweighed the identity between them arising from the presence of the word 'metro', there was no likelihood of confusion.

The General Court first observed that, according to settled case law, a likelihood of confusion also includes a risk of association. Further, the likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case.

With respect to the similarities between the marks, the General Court pointed out that the global appreciation of the visual, aural or conceptual similarity must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. In this respect, the comparison between the marks must be made by examining each of them as a whole, which - as noted by the court - does not mean that the overall impression conveyed to the relevant public by a composite trademark may not, in certain circumstances, be dominated by one or more of its components. However, it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. Moreover, the court remarked that, where a mark consists of word and figurative elements, the former are, as a rule, more distinctive than the latter, as the average consumer will more easily refer to the goods covered by the mark by citing the word element.

Applying the foregoing considerations to the marks at issue, the General Court observed that they were similar, as both contained the word 'metro'. Moreover, regarding the aural and conceptual similarities, the court noted that the word 'metro' was distinctive, while the other word elements contained in the application ('kids', 'company', 'established' and '1989') were less distinctive, since they contained information about the relevant public or the date of incorporation of the applicant. The distinctiveness of the word 'metro' was not reduced by the presence of graphic and word elements, as the word 'metro' was found to attract the public’s attention more than the other elements.

In fact, according to the court, there was an even stronger aural similarity between the marks, as the figurative elements would not be pronounced and consumers normally attach more importance to the beginning of a word. In any case, the court found that, even assuming that the target public pronounced the expression “metro kids company” in full, there was still some phonetic similarity between the marks.

Finally, the court noted that there is a likelihood of confusion if, cumulatively, the degree of similarity between the marks and the degree of similarity between the goods or services covered by those marks are sufficiently high. Talking all the elements of the case into account and considering that the goods in Classes 24, 25 and 39 covered by both marks were identical, the court ruled that the degree of similarity between the marks was sufficiently high and dismissed the action.

Margherita Barié and Pietro Pouché, Carnelutti Studio Legale Associato, Milan