JC marks for identical goods held to be dissimilar

European Union
In JC AB v Conran (Case B 961 070, September 30 2009), the Opposition Division of the Office for Harmonization in the Internal Market (OHIM) has held that the stylized trademark JC was not confusingly similar to earlier marks containing the letters 'JC'.  
Jasper Conran, a UK citizen, sought to register the stylized initials 'JC' as a Community trademark for goods in Classes 3, 18, 20, 24, 25 and 27 of the Nice Classification. The mark consisted of a "monogram with curly embellishments". An opposition was lodged by Swedish company JC AB based on its Swedish and Community registrations for the trademarks JC,  JC (and design) and JC JEANS & CLOTHES. The opposition was directed only at the goods in Classes 18 and 25. The Opposition Division held that although the goods were identical, there was no likelihood of confusion between the marks.  
Comparing the mark applied for with the earlier word mark JC, the Opposition Division considered that they were dissimilar from a visual point of view. According to the Opposition Division, the "complex assembly of curved lines forming the contested mark creates [...] a visual impression of a purely figurative sign". From a phonetic point of view, the Opposition Division found that the mark applied for could not be pronounced, since it did not clearly show the initials 'JC'.
The Opposition Division then turned to the comparison of the mark applied for with the earlier figurative mark JC and the word mark JC JEANS & CLOTHES. It concluded that these earlier marks were "even less similar" to the mark applied for, as they contained additional figurative elements or words.   
Arguably, the letters 'JC' in the mark applied for were easily identifiable, as the font used was quite common. Therefore, the Opposition Division should have concluded that consumers would be able to recognize the letters.
However, even if the letters 'JC' had been found to be easily identifiable in the mark applied for, the Opposition Division might still have concluded that the marks were dissimilar since, according to OHIM case law, trademarks consisting of initials enjoy only limited protection. In general, trademarks that contain the same letters, but have different designs, will be found to be dissimilar (see, eg, the decision of the First Board of Appeal in SINCROSTAR SL v Monseur, and the decisions of the Opposition Division in Trouble v Buttress BV and Pablo Garrigós Ibáñez SL v GAM sp zoo).
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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