HOOLIGAN fights off challenge from OLLY GAN

In Société provençale d'achat et de gestion SA v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has dismissed an opposition to the registration of HOOLIGAN as a Community trademark.

In April 1996 Frank Dann and Andreas Becker filed an application with the OHIM for the word mark HOOLIGAN in Class 25 of the Nice Classification (clothing and headgear). Société provençale d'achat et de gestion SA (SPAG) filed a notice of opposition based on its earlier French mark OLLY GAN and international mark for the same words in Germany, Italy, Portugal and Spain, both in Class 25.

The OHIM's Opposition Division upheld the opposition on the grounds that, at least in France and Portugal, the words HOOLIGAN and OLLY GAN were phonetically similar and so there was a likelihood of confusion between them. That decision was overruled by the Board of Appeal. The board found essentially that the average French or Portuguese consumer was aware of the usual meaning of the English word 'hooligan' and its spelling, and pronounced the opposing marks in a different manner. The board concluded that there was no visual, phonetic or conceptual similarity between the marks and that, accordingly, there was no likelihood of confusion. SPAG then applied to the CFI to have the board's decision annulled.

The OHIM raised a preliminary point regarding the matters SPAG could bring before the court. The purpose of bringing cases before the CFI under Article 63(2) of the Community Trademark Regulation is to review the legality of decisions by the Boards of Appeal. Article 74 states that this review must be carried out in the light of the factual evidence brought before the boards. The OHIM argued that SPAG could not raise matters that had not previously been raised before the board, such as:

• the identical nature of the products in question;
  
  
• the geographical areas for which proof of use of the earlier marks was adduced;
  
  
• the relevance of the geographical areas; and
  
  
• the lack of visual similarity between the marks.

The OHIM also argued that the question of the high distinctiveness of the earlier marks could not be raised by SPAG. To do so at this stage, the OHIM argued, would change the subject matter of the dispute and thus contravene the CFI's Rules of Procedure.

The CFI did not entirely agree with the OHIM. The court noted that the Board of Appeal is required to base its decision on all the matters of fact and law contained in the decision contested before it that the party concerned introduced either in the proceedings before the department that heard the application at first instance or in the appeal. The court held that, apart from the question of distinctiveness based on reputation, all of the matters identified by the OHIM were part of the factual and legal framework before the Board of Appeal. The court reasoned that such matters had been dealt with by the Opposition Division and that the Board of Appeal should have based its decision on all matters of fact and law that led to the decision contested before it. Such matters could therefore be debated before the court.

The court did, however, agree with the OHIM on the question of distinctive character resulting from the reputation of the earlier marks. It found in this instance that the issues and evidence were inadmissible because SPAG had not raised this matter in opposition proceedings before the OHIM. Conversely, the CFI found that the OHIM should have examined the matter of inherent distinctive character of the earlier marks. Unlike reputation, this did not require the party relying on it to provide facts, argument or evidence, and its determination was down to the OHIM alone. As such, arguments from SPAG on inherent distinctiveness were allowed to be examined on their merits before the CFI.

The CFI made an overall assessment of the conflicting marks and concluded that the board was right in finding that the relevant public would not be confused between them. The court agreed that the marks were visually different, the earlier OLLY GAN mark consisting of two words compared with the single word HOOLIGAN, although it found the OHIM's argument concerning the phonetic differences between the marks less persuasive. The fact that the Board of Appeal mistakenly relied on a Spanish dictionary for the purpose of illustrating Portuguese pronunciation did not help matters. Nevertheless, the court accepted that the majority of French consumers were familiar with the word 'hooligan' and the basic pronunciation of it.

The CFI also agreed with the OHIM that there were conceptual differences between the marks. The mark for which registration was sought derived from the concept of 'hooligan' which, of course, is known to French and Portuguese consumers by its connection with football. Thus, the HOOLIGAN mark would be understood and assimilated as such by the relevant public. On the other hand, the OLLY GAN mark would be taken by that group as signifying primarily a first name and a surname, which is a widespread concept in the clothing sector. Furthermore, there was nothing to indicate that the first name OLLY and surname GAN could be considered significant in the minds of the relevant public. Thus, OLLY GAN was not said to have an inherently high degree of distinctiveness.

The opposition was dismissed.

Aaron Wood, Hammonds, London