General Court: mark applied for will not be considered as part of opponent’s family of marks

In Debonair Trading Internacional Ldª v Office for Harmonisation in the Internal Market (OHIM) (Case T-356/12, April 3 2014), the General Court has upheld a decision of the Fourth Board of Appeal of OHIM finding that the trademark applied for could not be considered to be part of the family of marks relied on by the opponent. 

Ibercosmetica SA de CV filed an application for registration of the Community word mark SÔ :UNIC for goods in Class 3 of the Nice Classification.

Debonair Trading Internacional Ldª filed an opposition based, primarily, on 24 earlier registered marks for goods in Class 3. All of the 24 word marks contained the word element 'so…?'. They included, for example, SO…? ONE and SO…? CHIC.

Debonair held that there existed a likelihood of confusion between the trademark applied for and the family of marks relied on and, consequently, the mark applied for would be considered to be part of the family of marks. The Opposition Division, as well as the Fourth Board of Appeal of OHIM, dismissed Debonair's opposition. Debonair then appealed to the General Court.

The General Court held that likelihood of confusion attaching to a family of earlier marks can be found only if the following two conditions are met:

• the opponent must prove use of a number of marks capable of constituting a family of marks; and
• the opponent must prove that the trademark applied for displays characteristics capable of associating it with the family of marks.

In this connection, the General Court held that the Board of Appeal had not erred in ruling that it was in no way obliged to establish whether the first condition had been met, since it had found that the second was not.

However, the General Court elaborated on a general level on the content of the first condition, and held that a family of marks exists when, among other things, a number of marks reproduce in full a single distinctive element with the addition of a graphic or word element differentiating them from one another, or repeat a single prefix or suffix taken from an original mark. Those criteria ought to be included in the examination of whether the mark applied for could be confused with the family of mark relied on.

In relation to the second condition, the General Court upheld the decision of the Board of Appeal that the trademark applied for did not display characteristics capable of associating it with the family of marks for the following reasons:

• The element 'sô :' does not refer to the beginning of a question, contrary to Debonair's 'so…?' marks.
• SÔ :UNIC does not contain a question mark or suspension points, contrary to the earlier 'so…?' marks. Instead, the mark applied for contains a colon and a circumflex over the letter 'O', which does not exist in the English word 'so'.
• The word 'unic' is not an English word, while the words or expressions following the element 'so…?' consisted, in the majority of cases, of everyday English words.

Further, the General Court held that only little significance could be attached to the fact that the Board of Appeal had not taken account of the fact that the goods covered were, in part, identical, as the differences between the mark applied for and the family of marks relied on were sufficient to preclude the mark applied for from being regarded as belonging to that family.

In summary, the General Court confirmed the Board of Appeal's analysis that, even if the earlier marks were to form a family of marks, this fact alone did not permit a finding that there was a likelihood of confusion, as the mark applied for, viewed as a whole, did not correspond to the pattern characterising the family of marks relied on.

Mette-Marie Henrichsen, Plesner, Copenhagen