General Court: some IT services are not directed only at specialists

In Singer v Office for Harmonisation in the Internal Market (OHIM) (Case T-388/12, October 16 2013), the General Court has upheld a decision of the Second Board of Appeal of OHIM in which the latter had found that there was a likelihood of confusion between the marks CORDIO and CORDIA.

Daniela Singer filed an application for registration of the word mark CORDIO for the following services in Class 42 of the Nice Classification: "creation of web pages; consultancy with regard to the design of homepages and internet pages; homepage and web-page design; updating of web pages; updating of computer software; computer software design; maintenance and installation of software; data management on servers; rental and maintenance of memory space for websites, for others (hosting); rental of storage space on the Internet; rental of webservers; providing web space (web-hosting); providing memory space on the Internet".

Cordia Magyarország Ingatlanforgalmazó Zártkörüen Müködö rt filed an opposition based on the earlier word mark CORDIA, also registered for services in Class 42, corresponding to the following description: "Design of interior decor; packaging design services; graphic arts designing; industrial design; creating and maintaining websites for others; architecture; architectural consultation".

The Opposition Division and the Second Board of Appeal of OHIM upheld the opposition, and Singer appealed the decision to the General Court.

Singer claimed that there was no likelihood of confusion between the marks at issue due to, among other things, the fact that the services offered by Singer were directed at a different sector.

First, the General Court held that the services covered by the mark applied for and the services covered by the earlier mark were similar. In this respect, the court noted that:

• the services were of same nature (ie, information technology services);
• they had the same purpose, which was to create products linked to computing; and
• they were usually provided by the same companies.

Second, the General Court confirmed the Board of Appeal's finding that the sectors of activity in which the proprietor of the earlier mark and the proprietor of the later mark operated in were irrelevant. The court noted that particular marketing strategies for goods or services covered by the marks can vary over time and depend on the wishes of the proprietors of those marks, and that the prospective assessment of the likelihood of confusion between two marks cannot be dependent on marketing intentions which are by their very nature subjective for the proprietors of the marks. Instead, OHIM should, in the context of opposition proceedings, take account of the list of services applied for only as it appears in the trademark application concerned.

Singer had also claimed that there was no likelihood of confusion between the marks at issue due to the fact that the relevant public was composed of specialists who are very attentive to small differences between signs.

The General Court held - as the Board of Appeal had pointed out - that many of the services covered by the marks were (also) directed at the general public with a normal degree of attentiveness. That was the case, in particular, with regard to the services of "creation and maintenance of web pages", which may be inexpensive and do not require a high level of technical knowledge.

As the majority of the services concerned were directed at the general public, Singer's claim that professionals are very attentive to small differences between signs became irrelevant. Therefore, and based on the above, the General Court found that there was a likelihood of confusion between the marks and the application for the trademark CORDIO was rejected.

Mette-Marie Henrichsen, Plesner, Copenhagen