HAI mark owner nets win following SHARK attack

In Osotspa Co Ltd v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has upheld a decision to refuse an opposition to the registration of HAI as a Community trademark. The court held that although the proposed registration consisted of the German word for 'shark' and covered similar goods to the opponent's prior registered SHARK mark, there was no likelihood of confusion.

German company Distribution & Marketing GmbH filed a Community trademark application for HAI in Classes 5, 12, 14, 25, 28, 32, 33, 34, 35, 41 and 42 of the Nice Classification. Osotspa Co Ltd, a Thai company, filed an opposition based on an Austrian national registration and Community trademark registration for SHARK, both of which cover "non-alcoholic drinks; syrups and other preparations for making beverages" in Class 32. Both companies produce and sell energy drinks under their trademarks.

The OHIM Opposition Division rejected the opposition and an appeal was also dismissed on the grounds that although the goods covered by the conflicting marks were partially identical, there was no significant likelihood of confusion on the part of the public in EU member states, and in Austria in particular, because of the aural, visual and conceptual differences between the opposing marks. Osotspa appealed.

The CFI dismissed the appeal and upheld the earlier ruling.

It first noted that, given that the earlier marks were the subject of a national registration in Austria and also a Community registration, the relevant territory for the analysis of likelihood of confusion was the whole of the European Union, and Austria in particular.

The court held that there was no visual or aural similarity between the signs in question but there was some conceptual similarity because the English word 'shark' translates as:

• 'hai' in German and Finnish;
  
  
• 'haai' in Dutch; and
  
  
• 'haj' in Danish and Swedish.

The CFI agreed that the goods covered by both marks were partly identical. It also stated that the earlier SHARK marks have a distinctive character per se because they (i) do not contain any descriptive elements, and (ii) are striking as a result of the special stylized character of the letters. However, in the court's opinion, the conceptual similarity alone, which requires the relevant consumers to perform a translation of the HAI mark, was not sufficient to conclude that there was a likelihood of confusion. It held that the significant visual and aural differences between the marks were such as to cancel out, to a large extent, their conceptual similarity.

This decision is contrary to settled German case law, according to which there is a likelihood of confusion if the meaning of the signs at issue is identical following translation. But the court correctly pointed out that although national decisions in EU member states are factors that may be taken into consideration, they do not need to be given decisive weight.

Friederike Bahr, Beiten Burkhardt, Munich