INVESTHEDGE is confusingly similar to HEDGE INVEST, says CFI

In Hedgefund Intelligence Ltd v Office for Harmonization in the Internal Market (OHIM) (Case T-67/08, June 11 2009), the Court of First Instance (CFI) has upheld a decision of the Board of Appeal of OHIM in which the latter had found that the inversion in one mark of the elements of another mark was insufficient to offset a likelihood of confusion between the two, even where the marks were not descriptive in the language of the relevant public. On the facts in this case, the application was not rescued by the addition of a figurative element.

Hedgefund Intelligence Ltd applied to register the stylized mark INVESTHEDGE as a Community trademark in respect of financial goods and services in Classes 9, 16, 36 and 41 of the Nice Classification.

Hedge Invest SpA opposed the application on the basis of its earlier registration for the mark HEDGE INVEST (and design) for services in Classes 36 and 41. Because its mark had more distinctive character in the non-English-speaking parts of the European Union, Hedge Invest’s opposition concentrated on the impact of the two marks on the non-English-speaking public.

The Opposition Division of OHIM found that there was a likelihood of confusion between the marks. On appeal, the Board of Appeal affirmed, holding that:

• the marks were visually and phonetically similar; and
• the services in Class 36 were identical and those in Class 41 were similar.

Hedgefund appealed to the CFI.

The CFI upheld the decision of the Board of Appeal, finding that:

• the two marks were composed of two identical and clearly identifiable elements; and
• the mere inversion of the two elements did not lead to the conclusion that there was no visual similarity.

The CFI upheld the board’s findings that:

“the reversal in one mark of the essential elements of another mark may serve as a basis for a finding of no likelihood of confusion only if the transposed mark creates a distinctly different commercial impression. Here, the commercial impression is the same.”

In reaching its conclusion that the marks were phonetically similar, the CFI had regard to the following elements:

• the words 'hedge' and 'invest' would be pronounced in the same way across the European Union;
• the two marks consisted of the same syllables and the same number of syllables; and
• the marks were identical in length from a phonetic point of view.

The fact that the two elements were inverted did not prevent the signs from being phonetically similar.

Looking at the marks from the point of view of a non-English speaker, the CFI upheld the board’s finding that the two words were not descriptive and were neither similar nor dissimilar from a conceptual point of view.

The CFI rejected Hedgefund’s argument that the figurative elements of its mark were distinctive, finding them to be insignificant. The CFI followed the decision of the European Court of Justice in OHIM v Shaker (Case C-334/05 P) in finding that the attention of the public would be drawn to the verbal elements of the mark.

Upholding the board's findings on the similarity of services, the CFI dismissed Hedgefund’s appeal and rejected the application in Classes 36 and 41.

Arguably, the INVESTHEDGE mark was doomed from the start by the lack of imagination of Hedgefund. Even where the target market is non-English speaking, when applying for an EU-wide right, the impact of the mark on the whole of the European Union must be taken into account. Hedgefund resorted to arguing that the word 'invest' would be understood even by non-English speakers and constituted the more distinctive element of the mark: if an applicant is inclined to argue that an element of its mark is descriptive to boost its argument that the mark as a whole is distinctive, it should be encouraged to go back to the drawing board and create a different mark.

Bratin Roy, McDermott Will & Emery UK LLP, London