Highly distinctive character must be attributed to mark as a whole

European Union

In Max Mara Fashion Group Srl v Office for Harmonisation in the Internal Market (OHIM) (Case T-272/13, December 3 2014), the General Court has upheld a decision of the Second Board of Appeal of OHIM in which the latter had found that there was no likelihood of confusion between the marks M&CO and MAX&CO.

Max Mara Fashion Group Srl challenged the Community trademark (CTM) application for M&CO in Classes 25 and 35 of the Nice Classification on the basis of its earlier CTM and national registrations for MAX&CO for identical or similar goods.

The Opposition Division and the Board of Appeal of OHIM rejected the opposition on the ground that there was no likelihood of confusion, even assuming that the earlier MAX&CO marks had a highly distinctive character.

The similarity of the signs and the likelihood of confusion were the basic issues brought before and examined by the General Court.

Confirming the assessment of the Board of Appeal, the General Court found, in the first place, that the common element '&Co' has a weak distinctive character since it is often used internationally, in business names, as an abbreviation of the element ‘and company’ in order to refer to the partner or partners not named in the title of the firm.

Following the above conclusion, it held that, in view of the fact that the dominant elements 'M' and 'MAX' are visually and aurally dissimilar, the overall impression of the marks under comparison was quite different.  

In view of the above, there was no surprise in the General Court’s assessment regarding the likelihood of confusion. It concurred with the Board of Appeal that, despite the alleged highly distinctive character of the earlier MAX&CO marks and the identity of the goods in question, the visual and aural dissimilarity of the marks was sufficient to rule out a likelihood of confusion.

Interestingly, the General Court rejected Max Mara’s argument that the purported highly distinctive character of its earlier marks extended to the element '&Co'. It confirmed the opinion of the Board of Appeal that, where a mark has a highly distinctive character, that distinctive character must be attributed to that mark as a whole and not to all the elements of which it is composed, in particular to those elements which are inherently weak, as is the case with '&Co'.

The ruling of the General Court is in line with settled case law on the assessment of similarity and the likelihood of confusion where the common elements of the marks under comparison have a weak distinctive character.

Nicolas K Dontas, Dontas Law, Luxembourg 

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