General Court navigates the basics of trademark law

European Union
In NEC Display Solutions Europe GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-393/09, October 13 2011), the General Court has provided a reminder of the basic function of trademarks: that they exist as a guarantee of trade origin.

In 2005 NEC Display Solutions Europe GmbH applied to register the mark NAVIKEY. The application was accepted for "computer and computer accessories, namely computer monitors". This caught the attention of Nokia Corp, who successfully opposed NEC’s application. Nokia relied on its Community trademark and Finnish registrations for NAVI, which covered items in Classes 9 and 38 of the Nice Classification, including apparatus for recording, processing and reproducing data.

NEC unsuccessfully appealed the decision to the Second Board of Appeal of OHIM. In finding in favour of Nokia, the board held that there was a likelihood of confusion because the marks and the goods were similar.

Once again dissatisfied with the outcome, NEC applied to the General Court to have the board’s decision annulled. NEC argued that:
  • the board’s assessment of the relevant public - that it consisted of consumers with an average degree of attentiveness - was incorrect because the target market for the relevant goods would in fact display greater than average attentiveness;
  • contrary to the board’s finding, the goods in question were not similar;
  • the earlier mark had a low level of distinctiveness, which means that the word 'key' was sufficient to distinguish between NAVI and NAVIKEY; and
  • the board had erred in finding that there existed a likelihood of confusion between the marks.
NEC’s arguments based on the relevant public were dismissed. The General Court found that the board’s assessment of the relevant public’s attentiveness was actually that it would be greater than average because the relevant goods were of a specific nature, as opposed to being items for everyday use. Accordingly, the board’s assessment was no different to NEC’s.

On the similarity of goods, the General Court observed that Nokia’s specification was broad enough to include computers and related products. It thus held the goods to be similar because:
  • they assisted in the operation of a computer system;
  • the users of the goods were the same; and
  • the goods were complementary in the sense they could be used in close connection with each other.
NEC’s most compelling argument was in relation to the comparison of the signs. It claimed that, because NAVI is an abbreviated form for 'navigation', it had low distinctive character. The word 'key', in NEC’s view, was therefore the dominant element and the distinguishing factor between the marks.

However, the General Court felt otherwise. It did not regard the word 'key' as dominant; rather, it was felt to be of weak distinctive character because it is synonymous with the word 'button'. Indeed, the General Court found that NAVIKEY evokes the idea of a button used to navigate a computer system.

On balance, the General Court found the marks to be phonetically and visually similar due to the common word 'navi' and the placement of that word at the beginning of the NAVIKEY mark. Given the similarity of the goods and the marks, NEC’s argument that the board had erred in finding there to be a likelihood of confusion was also dismissed.

In giving its decision, the General Court was careful to note that even circumspect and observant consumers might see NAVIKEY as a variant of the earlier mark and, as a result, believe that the relevant goods come from the same source or economically linked undertakings. The General Court’s confirmation that the underlying function of a trademark is to act as an indication of origin is a kind reminder that, at the heart of trademark law, lies the interests of the consumer.
Mark Holah and Richard Hing, Field Fisher Waterhouse LLP, London

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