General Court makes 'surprising' findings regarding procedural aspect

In Fuchs v Office for Harmonisation in the Internal Market (OHIM) (Case T-342/12, October 8 2014), the General Court has confirmed a decision of the Fifth Board of Appeal of OHIM finding that there was a likelihood of confusion between two marks consisting of a five-pointed star within a circle. The decision contains complex - and possibly surprising - findings with regard to a procedural aspect.

On December 28 2006 Max Fuchs filed a Community trademark (CTM) application for a black five-pointed star surrounded by an intermittent black line forming a circle in respect of goods in Classes 18, 24, 25 and 26 of the Nice Classification:

On October 22 2007 Les Complices SA filed an opposition based on an earlier CTM registration in Classes 18 and 24 and an earlier French registration in Class 25. The two marks consisted of a white five-pointed star within a black circle.               

Following a partial limitation to specific goods in Classes 18, 24 and 25, on June 30 2011 the Opposition Division of OHIM rejected the opposition for the goods in Class 24 and allowed it for the goods in Classes 18 and 25.

On May 8 2012 the Fifth Board of Appeal of OHIM dismissed the applicant's appeal, holding that there was a likelihood of confusion between the marks with respect to the goods in Classes 18 and 25. Even though a five-pointed star was the most common way to represent a star, the board found that the minor visual differences between the signs and their conceptual identity were sufficient to establish a likelihood of confusion.

The board's decision was further appealed to the General Court on August 1 2012.

On June 24 2013 the applicant filed a cancellation action against the opponent's CTM registration, arguing that the mark had not been put to genuine use. As Les Complices had apparently not submitted any evidence of use, the cancellation of the CTM was ordered on October 24 2013, with effect from the filing date of the revocation action. Hence, one of the marks on which the opposition was based was revoked in its entirety as from June 24 2013. Therefore, Les Complices could rely only on the French registration for goods in Class 25, which did not give it any rights in Class 18; the revocation of the CTM thus had an impact with respect to the goods in Class 18.

The General Court first considered the impact of the revocation of the CTM on the opposition proceedings. German authorities, and possibly authorities in other EU countries, would take a rather practical approach in such a situation: if one of two marks on which an opposition is based ceases to exist due to revocation, the authorities do not take it into account and might reverse previous decisions if they were based on the revoked mark. According to German practice, the decisive date is the date on which the final decision was issued.

However, the EU procedure seems to be more complex, which resulted in a somewhat surprising conclusion by the General Court. It stated that the revocation of the CTM was effective as from June 24 2013, which was the filing date of the revocation action; this meant that, until that date, the CTM benefitted from all the effects provided for under the Community Trademark Regulation (207/2009). Hence, the CTM was still valid when the Board of Appeal issued its decision on May 8 2012. As the General Court can examine only the legality of the decisions of the Board of Appeal, and as the revocation of the CTM took effect only after the board had rendered its decision, such revocation had no impact on the General Court's examination.

Therefore, despite the revocation of the CTM and its impact on Class 18, the General Court affirmed the applicant’s interest in challenging the board's decision, and proceeded to examine whether the board had made any errors in law. The court noted that the applicant could “simply present, before OHIM, a fresh application for registration of his mark”, without it being possible for opposition to that application to be based on the earlier CTM that had been revoked.

After clarifying this procedural issue, the General Court turned to the merits of the action. The court reiterated the well-established guidelines to assess the likelihood of confusion, including the global assessment of all the relevant factors and the interdependence between the similarity of the goods, the similarity of the signs and the distinctiveness of the earlier mark.

The goods in Classes 18 and 25 were identical, so this was not an issue. The General Court also agreed with the Board of Appeal that the marks were visually similar because:

• they both consisted of five-pointed stars placed within a circle;
• the proportion between the different elements was the same;
• the fact that the circle in the mark applied for was represented by a dashed line was not sufficient to find that it was not a circle; and
• the fact that the mark applied for consisted of a black star on a white background, while the earlier marks consisted of a white star on a black background, amounted only to a minor difference.

Turning to the phonetic similarity, the General Court held that figurative marks without any word elements cannot be compared phonetically in principle. The Board of Appeal had stated that both signs represented a star and that consumers would therefore refer to them orally as a star. However, the General Court was of the opinion that this finding had not been used by the Board of Appeal to conclude that there was a phonetic similarity. As the board had not made any reference whatsoever to a phonetic comparison of the signs in accordance with well-established law, the applicant’s submission that the board had carried out a phonetic comparison of the signs had no factual basis.

Finally, the General Court agreed with the Board of Appeal that the marks were conceptually identical. Even if the applicant’s submission that five-pointed stars do not have distinctive character were to be upheld, this would not be sufficient for it to be held that the marks conveyed different concepts.

In the global assessment of the likelihood of confusion, the court again referred to the applicant's argument that five-pointed stars are not distinctive and could not serve as a basis to affirm a likelihood of confusion. The court referred to the fact that both marks did not contain only a five-pointed star and that the circle also had to be taken into account. Further, the General Court stated that the applicant could not rely in these opposition proceedings on absolute grounds for refusal and that he ought to have applied for cancellation under Article 51 of the regulation. As the marks of the opponent were registered at that point of the proceedings, they possessed at least a minimal distinctive character, and the similarity of the marks was not based only on the fact that they both contained a five-pointed star.

The General Court also rejected the applicant's argument that the scope of protection of the opponent’s mark should be limited to complete reproductions (ie, to identical marks), as this would not be consistent with the very nature of the global assessment of the likelihood of confusion. As consumers did not have the opportunity to examine the marks side by side and had to rely on their imperfect recollection, the General Court held that the Board of Appeal had rightly found that there was a likelihood of confusion for the goods in Classes 18 and 25. The action was thus dismissed.

The decision on substantive law is not surprising. The procedural aspect of the decision might be confusing, however, due to the fact that the General Court only examines the legality of the decision of the Board of Appeal and does not take any additional factors into account. As the applicant filed his revocation action relatively late in the proceedings, the revoked CTM registration in Class 18 could still serve as a basis for the opposition and the General Court did not draw any conclusions from the subsequent revocation. The applicant could possibly have obtained a better result if the revocation action had been filed earlier. As the CTM was registered in 2003, it would have been possible to file a revocation action after 2008 - that is, long before the Opposition Division and the Board of Appeal decided on the opposition. They would probably have come to a different conclusion if the CTM had been revoked earlier. The applicant is now facing a rejection of his application in Classes 18 and 25, and the only option seems to be to file a new application in Class 18, as the mark on which the opposition was based for that class no longer exists. These rules might need to be changed in the future, as they are not logical and would not be understood by ordinary consumers.

Carsten Albrecht, FPS Fritze Wicke Seelig, Hamburg