General Court: consumers do not always attach more importance to first part of words

The decisions of the General Court in Laboratoires Polive v Office for Harmonisation in the Internal Market (OHIM) (Case T-77/13 and Joined Cases T-122/13 and T-123/13) have shown that having a partially favourable outcome on appeal can sometimes bring more sorrow to the winner than simply losing before the Boards of Appeal of OHIM. In fact, if the winning party decides not to appeal a decision that is somewhat favourable but, for instance, the board did not take into account all the earlier rights mentioned in the opposition and the losing party decides to appeal that decision, the winning party will not have the opportunity to broaden the scope of the appeal and will not benefit from those arguments and facts that have not been analysed by the board.

The conflict in the present case begun when, in January 2007, Laboratoires Polive filed a Community trademark (CTM) application for the word mark DODIE in Classes 3, 5 and 10 of the Nice Classification. Arbora & Ausonia SLU opposed the application based on the earlier word mark DODOT (Spanish Registration No 2601120) covering goods in Classes 3, 5, 10 and 16, and on a CTM application for the word mark DODOT (No 3780715) covering goods in Classes 16, 24 and 25. The opposition was based on the grounds referred to in Article 8(1)(b) and Article 8(5) of the Community Trademark Regulation (207/2009).

In April 2010 Polive decided to file two additional trademark applications, this time for device marks (depicted below) covering a wider range of products; these applications covered not only Classes 3, 5, 10 and 16, but also Classes 8, 11, 18, 21, 25 and 28.

These two applications were also opposed by Arbora & Ausonia, which based the oppositions on the earlier Spanish trademark mentioned above, as well as on the earlier Portuguese word mark DODOT (Registration No 382292), which covered a wider range of goods than the abovementioned CTM.

On August 2011 the Opposition Division of OHIM rejected the opposition against the word mark DODIE in its entirety on the grounds that there was no likelihood of confusion between the marks at issue. For the purposes of its examination of the likelihood of confusion, the Board of Appeal limited itself to comparing the mark applied for to the prior Spanish registration (and not the prior CTM, which the board referred to only in the comparison of the goods).

Shortly after, the Opposition Division partially upheld the other two oppositions on the basis that there was a likelihood of confusion between the trademarks at issue in respect of “sanitary and toiletry products, milks and lotions for toilet use, toilet soaps, liquid or non-liquid, oils, creams, cosmetics, impregnated toilet napkins and wipes of cellulose, wipes of paper for cosmetic use or of non-woven textile for toilet use” and “cases and bags for transporting accessories for babies” in Classes 3 and 18, respectively.

Arbora & Ausonia appealed these decisions. The Second Board of Appeal of OHIM found that there was a likelihood of confusion between the marks at issue in respect to some of the goods in question. In particular, the board considered that:

• a visual similarity between the marks could not be excluded, due to their similar length and their common first three letters;
• the phonetic similarity between the marks was lower than average; and
• conceptually, the signs were not similar.

The board concluded that there was a likelihood of confusion between the marks applied for and the Spanish and Portuguese marks only with regard to the goods in Classes 3, 5, 8, 10, 11, 16, 18, 21, 25 and 28 covered by the mark applied for that were identical to the goods covered by the earlier marks, or similar to a high or average degree. Further, the Board of Appeal took in consideration the fact that the earlier marks could enjoy enhanced distinctiveness through the use made of them in relation to "nappies and nappy pants" only.

Polive appealed to the General Court against the board's three abovementioned decisions, alleging infringement of Article 8(1)(b) of the regulation, and claiming that the marks were different and could coexist. Polive further argued that the relevant public for these kinds of products was reasonably well informed and reasonably observant and circumspect, since most of these goods are intended for babies and small children.

The General Court, however, confirmed the board’s finding that, while the group of average consumers for that category of goods will also include careful parents, it will not consist exclusively of such consumers (Hipp & Co v OHIM (T-221/06, September 16 2009), Paragraph 40).

As to the comparison of the signs from a visual perspective, the court agreed with Polive’s argument that there are exceptions to the rule which states that consumers tend to pay more attention to the beginning of trademarks. In this case, the court found that the diphthong 'ie' and the final part 'ot' are unusual for Spanish and Portuguese consumers and, therefore, it was very likely that they would pay more attention to the final part of the trademark instead of the beginning. With regard to the device trademarks, the court pointed out that the device element (ie, the representation of a rabbit) further weakened the similarity between the signs. Therefore, the court found the trademarks to be visually dissimilar.

As regards the phonetic comparison, the court also agreed with Polive’s arguments and decided that the marks  were similar only to a very low degree. The court noted that, from the perspective of Portuguese and Spanish consumers, the rhythm of pronunciation - or, at least the intonation of each of the marks - was different.

As to the conceptual comparison, the board’s finding that these signs had no meaning from the perspective of the relevant public was not contested by the parties and was upheld by the court.

The court concluded that the signs at issue were similar only to a very low degree and that, despite the identity of most of the goods and the similarity of others, the board had erred in finding that there was a likelihood of confusion since the signs under analysis were sufficiently different.

The court then turned to Arbora & Ausonia’s claim that it was not clear, in the contested decision, whether the board had taken into consideration the enhanced distinctive character of the Spanish trademark. First, the court explained that the board had considered that the Spanish trademark had enhanced distinctive character, but only with regard to “nappies and nappy pants” in Class 16, and that no appeal had been filed by Arbora & Ausonia regarding this conclusion. In addition, the court clarified that the enhanced distinctive character of a trademark is only one of the factors that should be taken into account in the assessment of likelihood of confusion.

Additionally, in the case involving the word mark DODIE (in which the opposition was based on the Spanish trademark and the CTM), the court rejected Arbora & Ausonia’s attempt to obtain the dismissal of the action based on its CTM because this earlier right had not been taken into account by the board, as no appeal had been filed regarding this part of the contested decision.

Further, the court dismissed Polive's claim that the court should reject the opposition in its entirety. In this regard, the court recalled that, under Article 65 of the regulation, the power of the court to alter decisions is limited to the issues on which the board has already adopted a position, so that the court is in a position to determine, on the basis of the matters of fact and of law as established, what decision the board was required to take. In the present case, the board had not examined whether there was a likelihood of confusion between the mark applied for and the other earlier rights on which the opposition was based; as a consequence, the court could not judge the legality of the board’s findings in this regard, nor determine what decision the board was required to take.