LIFE BLOG and LIFE held to be confusingly similar

European Union
In Nokia Oyj v Office for Harmonization in the Internal Market (OHIM) (Case T-460/07, January 20 2010), the General Court has rejected an appeal by Nokia Oyj concerning its Community trademark application for LIFE BLOG, which was successfully opposed by Medion AG based on its earlier registered German trademark LIFE pursuant to Article 8(1)(b) of the Community Trademark Regulation (40/94).
The incorporation of the word 'life' into composite trademarks had previously been considered by the European Court of Justice (ECJ) in Medion (Case C-120/04), in which a likelihood of confusion was found between LIFE and THOMSON LIFE, Thomson being the company name of the applicant (for further details please see "LIFE Case allows ECJ to clear up confusion over composite marks").
In the present case, the Board of Appeal of OHIM noted that this decision had been reached in Medion because 'life' was the second element in the THOMSON LIFE mark, and considered that the addition of 'blog' was unlikely to change the outcome. Taken together with the overall similarity of the marks and the goods, it concluded that there was a likelihood of confusion.
Before the General Court, Nokia argued that the board should not have relied on Medion, as the LIFE BLOG mark did not satisfy the conditions set out in the ECJ's decision. In particular, LIFE BLOG was not a combination of an earlier mark with the name of an undertaking. Moreover, the LIFE mark did not have a normal distinctive character and did not play an independent role within the LIFE BLOG mark.
Rather than looking to the Medion judgment, the General Court considered the similarity of the marks from first principles and held as follows:
  • The trademarks LIFE and LIFE BLOG were visually, aurally and conceptually similar, and the board had assessed the respective goods and services covered by the marks as being identical or similar.
  • Of the elements 'life' and 'blog', neither was clearly dominant, and it would have been artificial to find LIFE the dominant element purely due to its position in the mark.
  • The element 'blog' was less distinctive when used in relation to IT and technology goods or services, since it referred to an online diary. For other goods and services, where 'blog' had no meaning, the inherent distinctiveness of 'blog' was offset by the fact that 'life' was the first element of the LIFE BLOG mark.
The General Court thus considered that cumulatively, the degree of similarity between LIFE BLOG and LIFE, and the degree of similarity between the goods covered by the marks was sufficiently high for the board to decide that there was a likelihood of confusion.
The court specifically noted that it was possible to find a likelihood of confusion without reference to the Medion judgment. However, it pointed out that a general principle could be identified in Medion - namely, that where a composite mark consists of one component juxtaposed to another mark, that mark may still have an independent distinctive role even where it is not dominant. In such a case, the marks may be found to be similar. The court considered that the earlier mark LIFE did retain an independent distinctive role in the LIFE BLOG mark.
This decision confirms the general application of the decision in Medion, as previously applied in Harman International Industries v OHIM (Case T-212/07). It also demonstrates that:

  • the principle derived from Medion is not an exception; and
  • when correctly applied, the same conclusion can be reached through a global assessment of the likelihood of confusion.
Jeremy Dickerson and Jennifer Prior, Burges Salmon, Bristol

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