Interaction between phonetic and conceptual elements clarified

In Mülhens GmbH & Co KG v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance has issued a decision that explains how the interaction between the phonetic and conceptual elements of trademarks should be evaluated when assessing the likelihood of confusion.

US company Zirh International Corporation filed an application to register ZIRH as a Community trademark for various cosmetics and perfumes. Mülhens GmbH & Co KG, the owner of a figurative SIR Community trademark for similar goods, opposed the registration. The Opposition Division of the OHIM rejected the opposition on the grounds that there was no likelihood of confusion because the visual and conceptual differences between the two marks outweighed the phonetic similarities. The decision was upheld by the Second Board of Appeal of the OHIM and Mülhens appealed.

Mülhens claimed that the OHIM had incorrectly assessed the likelihood of confusion between the two signs. In particular, Mülhens pointed out that when making such an assessment, the OHIM must take account of the visual, phonetic and conceptual similarities between the marks at issue, based on the overall impression of the marks, including any dominant and distinctive elements. According to Mülhens, the marks SIR and ZIRH are phonetically virtually identical or, at least, extremely similar. Moreover, although the SIR mark is figurative, the SIR word element is predominant and characterizes the overall mark.

The European Court of First Instance dismissed the appeal. The court held that, due to the fact that ZIRH has no obvious meaning in any of the official EU languages and thus would be perceived by the general public as an invented word, there was no visual or conceptual similarity between the two marks. It noted that where marks are potentially phonetically similar in certain EU languages, as was the case here, the conceptual differences between them can counteract the phonetic similarities. However, for this to occur at least one of the marks at issue must have a clear and specific meaning that the relevant public can understand immediately. In the case at hand, the court stated that the SIR word element of Mülhens's mark has such a meaning and can be understood easily. It further noted that the visual differences between the marks also played a part in counteracting the phonetic similarities.

Pietro Pouchè, McDermott, Will & Emery/Carnelutti Studio Legale Associato, Milan