General Court confirms that numbers can be registered as trademarks
In Sport Eybl & Sports Experts GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-179/11, May 22 2012), the General Court has upheld a decision of the Fourth Board of Appeal of OHIM in which the latter had rejected the figurative trademark SEVEN SUMMITS based on an opposition filed by the holder of the earlier figurative trademark SEVEN.
Trademark applied for
In September 2007 Sport Eybl & Sports Experts GmbH filed an application for the registration of the figurative trademark SEVEN SUMMITS as a Community trademark for goods in Class 18 of the Nice Classification. The application was published in June 2008 and, in September 2008, the intervener, Seven SpA, filed a notice of opposition against the registration; the opposition was upheld by both the Opposition Division and the Fourth Board of Appeal of OHIM.
On appeal to the General Court, Sport Eybl put forward a sole plea, alleging infringement of Article 8(1)(b) of the Community Trademark Regulation (207/2009).
The General Court pointed out that the assessment of likelihood of confusion under Article 8(1)(b) must be based on the perception of an average consumer in the European Union, who is reasonably well informed and reasonably observant and circumspect.
First, the General Court compared the goods covered by the marks. The application for SEVEN SUMMITS covered the following goods in Class 18:
“Sports bags and holdalls, rucksacks, rucksacks for climbers, mountaineering accessories, namely mountaineering sticks, bags for campers, cases and boxes of vulcanised fiber, umbrella cases, casings of leather for springs, walking sticks, cane handles, game bags, leather belts, leather laces, umbrellas, handles for umbrellas, rucksacks for mountaineers, walking stick seats, leather shoulder straps, packaging pouches (sleeves, bags) of leather; sling bags for carrying infants, rain covers for bags, shoulder bags.”
The earlier SEVEN mark covered, among other things, goods in Class 18. The General Court found that the goods at issue were in part identical and in part similar.
The General Court then compared the overall impression given by the trademarks, as the average consumer usually perceives a trademark as a whole without analysing the various details. The court highlighted that, when a trademark includes an earlier trademark in its entirety and adds another word to it, it is a strong indicator that the marks are similar. The court found that the trademarks had a low degree of visual similarity and a moderate degree of oral similarity, and were conceptually similar.
The General Court highlighted that the initial part of a trademark usually has a greater impact, both visually and orally, than the final part, as the average consumer pays more attention to the initial part. The court held that the word 'seven' will be understood by a reasonably well informed and reasonably observant and circumspect consumer as the number 7. The same consumer would perceive the word 'summits' as a reference to a mountain peak, which is reinforced by the figurative elements representing mountains. The court stated that a very small part of the public would perceive the words 'seven summits' as referring to the seven highest mountains on the seven continents; however, the court found that the majority of consumers would perceive the two words as referring to seven mountains. The court further found that the word 'summits' could be perceived as a reference to the goods covered by the trademark; therefore, the word could not differentiate the trademarks sufficiently.
The General Court thus found the trademarks to be similar in light of:
- the common element 'seven';
- the fact that the earlier trademark’s dominant element was the word 'seven';
- the fact that 'seven' in the trademark applied for was prominently displayed; and
- the fact that the common element 'seven' was not negligible,
However, the positioning of 'seven' in the mark applied for did not mean that that word was the dominant element of the mark.
Based on those findings, the General Court established that there was an overall similarity between the marks, especially due to the presence of the word 'seven' in both marks.
The General Court then assessed the likelihood of confusion, taking into account the similarity of the goods/services, as well as the similarity of the marks. The court reiterated that a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods/services, and vice versa. The distinctive character of the earlier mark must be taken into consideration, but this is only one factor among others.
The General Court found that numbers can be registered as long as they meet the conditions laid down in Article 7 of the regulation. In other words, a number can be registered if it is capable of identifying the relevant goods/services as coming from a particular undertaking. The fact that a trademark consists of a number is not in itself sufficient to deprive the mark from distinctive character as long as the number is not descriptive of the goods/services covered by the mark. Therefore, the court found that the earlier mark was distinctive.
The General Court also stressed that, as long as the common component is not negligible, it will be sufficient to render the trademarks similar.
In addition, the court held that the relevant public might perceive the marks at issue as coming from the same manufacturer or from economically linked entities. The court highlighted that it is common in the clothing industry for a manufacturer to have sub-brands deriving from the original trademark; it is also not uncommon for the same mark to be configured in various ways.
The decision is interesting in that it confirms that:
- numbers can be registered as trademarks as long as they meet the general conditions set out in Article 7 in the regulation; and
- there may still be a likelihood of confusion even where both marks are figurative and are not very similar visually.
Christian Kragelund and Lisbeth Guldbæk Lemb, Gorrissen Federspiel, Aarhus
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