General Court takes 'cosmopolitan' view on confusing similarity
In Hearst Communications Inc v Office for Harmonisation in the Internal Market (OHIM), the General Court has upheld a decision of the Board of Appeal of OHIM in which the latter had found that there was no likelihood of confusion between the word mark COSMOBELLEZA and the earlier COSMOPOLITAN marks.
The recent decision of the court is the final decision in a long-running legal battle between the well-known media and publication company Hearst Communications Inc and OHIM. In November 2004 Hearst filed an opposition against the application for the word mark COSMOBELLEZA in Classes 35 and 41 of the Nice Classification for the organisation of exhibitions. The opposition was brought on the basis of Hearst's earlier national trademarks, international marks and non-registered marks COSMOPOLITAN, COSMO TEST, COSMO, COSMOPOLITAN TELEVISION and THE COSMOPOLITAN SHOW for goods and services in Classes 16, 25, 38, 39 and 41 with effect in Ireland, the United Kingdom, Germany, Spain, France, Italy, Austria and Portugal.
The Opposition Division of OHIM rejected the opposition, finding that there was no likelihood of confusion between COSMOBELLEZA and Hearst's earlier rights. In June 2009 the Second Board of Appeal dismissed Hearst's appeal.
In its appeal to the court, Hearst relied on Article 8(1)(b) of the Community Trademark Regulation (40/94), now the Community Trademark Regulation (207/2009), and claimed that the Board of Appeal had erred in finding that there was no likelihood of confusion or association between its earlier marks and the applied for COSMOBELLEZA mark.
The court upheld the Board of Appeal’s decision. In doing so, its primary focus was on the alleged similarity between the COSMOPOLITAN mark and the COSMOBELLEZA mark. In its global assessment, the court found that, even though the marks share the opening term 'cosmo', their visual and aural differences outweighed their similarities. The court did not accept that 'cosmo' was the dominant feature of the marks and restated the importance of the classic 'overall impression' test.
The court followed the approach taken by the Board of Appeal by examining the meanings of the marks in Germany, the United Kingdom, France and Spain. It held that there was no conceptual similarity between the marks in Germany, as the marks have no obvious meaning in German and would be perceived as fanciful. In the United Kingdom, Spain and France, the marks are conceptually dissimilar, as the mark COSMOPOLITAN refers to a person who is “worldly and familiar with other places and customs”, whereas the mark COSMOBELLEZA has no obvious meaning in English, and in Spain and France evokes the idea of “cosmic beauty”.
In considering the similarity between COSMOBELLEZA and Hearst's other marks, the court held that the marks COSMO and COSMO TEST were not visually, aurally or conceptually similar, and that the additional components of the COSMOPOLITAN TELEVISION and THE COSMOPOLITAN SHOW marks only served to enhance this dissimilarity.
The court rejected the opponent’s evidence of its enhanced reputation and held that, as there was no likelihood of confusion between the marks, such reputational evidence was irrelevant.
Hearst also claimed that it had a series of marks containing the term 'cosmo' and that there was a likelihood of association between its series of marks and the COSMOBELLEZA mark. It submitted proof of use in relation to magazines, publications and printed matter in Class 16, but no proof of use in relation to the services designated in Classes 35 and 41, the classes covered in the application for COSMOBELLEZA. As a result, the court upheld the decision of the Board of Appeal that there was no overlap between markets and respective consumers and, accordingly, the COSMOBELLEZA mark would not be perceived as forming part of Hearst's series of marks.
Alistair Payne and Amy Lawless, Matheson Ormsby Prentice, Dublin
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