General Court ‘dismantles’ Board of Appeal’s decision
In Run2Day Franchise BV v Office for Harmonisation in the Internal Market (OHIM) (Case T-64/11, February 7 2012), in a relatively rare scenario, the General Court has overturned a decision of the First Board of Appeal of OHIM overturning a decision of the Opposition Division which had upheld an opposition to a Community trademark (CTM) application for the following mark:
The application was filed by Runners Point Warenhandels GmbH in December 2007 for sportswear and related goods and services in Classes 18, 25 and 35 of the Nice Classification. In August 2008 Run2Day Franchise BV opposed the application under Article 8(1)(b) of the Community Trademark Regulation (40/94) (now the Community Trademark Regulation (207/2009)) based on:
- the word mark RUN2DAY;
- the figurative CTM RUN2DAY in Classes 25 and 35:
- the Benelux figurative trademark RUN2DATE in Class 25:
In January 2010 the Opposition Division upheld the opposition, but in November 2010 the Board of Appeal overturned the decision and rejected the opposition on the following grounds:
- the relevant public was the public at large for the goods, as well as professionals for the services, and the level of attention of the relevant public was not particularly high;
- the Class 18 goods covered by the application had a low degree of similarity with the Class 25 goods covered by the earlier marks, and the respective Class 25 goods and Class 35 services were identical;
- the marks were visually relatively similar, were phonetically similar and lacked conceptual similarity, despite the presence of the elements 'run' and '2' in the respective marks;
- the marks had a low level of distinctiveness in view of the descriptiveness of the word 'run';
- in the context of global appreciation, the differences between the marks and the low level of distinctiveness of the word 'run' eliminated any likelihood of confusion; and
- the earlier figurative marks were more different from the mark applied for than the earlier word mark.
The General Court held that the board’s examination of visual similarity was incorrect and contradictory because:
- on the one hand, it held that the word 'run' in the respective marks should be considered identical; and
- on the other, it held that the use of capital and lower case letters in the mark applied for should be taken into consideration.
With regard to phonetic similarity, the court noted that the board had held that the mark applied for was identical to the first two syllables of the earlier word mark, but that the element '2' would be perceived by the relevant public as meaning 'squared'. The court again concluded that the board’s examination was incorrect.
Turning to the conceptual similarity, the court again found that the board had concluded in error that the marks were not similar because it had refused to consider any such similarity arising from the word 'run'. According to the court, the concept of 'run' or 'running' would not be negligible in the overall impression created by the earlier word mark.
Having disagreed with the board on each count, the court concluded that the board had made errors in assessing the degree of similarity between the marks and in its global appreciation of the likelihood of confusion. It thus overturned the board’s decision.
Reading this judgment, it is tempting to conclude that the board erred alarmingly. However, it is on balance relatively easy to follow the board’s lines of argument and concur with them, in view of the arguably low distinctiveness of all the marks in question. Perhaps the most compelling impression left by the judgment is the comprehensive manner in which the court dismantled the board’s decision.
Chris McLeod, Squire Sanders (UK) LLP, London
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