Likelihood of confusion found despite descriptive meaning of common word element

European Union
In Hrbek v Office for Harmonisation in the Internal Market (OHIM) (Case T-434/10, November 15 2011), the General Court has held that there was a likelihood of confusion between two ALPINE logos even for skiwear, rucksacks and similar ski sports products, despite the descriptive meaning of the common word 'alpine' (meaning 'relating to the Alps').
 
The General Court controversially held that even the allegedly weak distinctive character of the word 'alpine' could not preclude a likelihood of confusion, as weak distinctive character is only one factor to be taken into account; the similarity of the marks and the goods were also factors to be considered. In this case, the goods were identical or similar and the marks were similar, and it was concluded that there was a likelihood of confusion. 
 
Although this decision implements principles set out in earlier case law (see PAGESJAUNES.COM (Case T-134/06)), it highlights the issue with marks containing descriptive elements. It appears that these principles are increasingly resulting in a mark containing a descriptive term as the main element, depicted in sufficiently large proportions, effectively claiming a monopoly as far as trademark registration is concerned against later applications which encompass that same descriptive term as a dominant element. 
 
It is submitted that this could be resolved by the weakness of the distinctive character of the dominant element being afforded a slightly heavier weight in the interdependence of factors. This is not unprecedented: the conceptual similarity element is a factor to be taken into account in the similarity of the marks, but visual and phonetic similarity are generally given greater weight in that comparison.

The earlier mark was ALPINE with a stylised letter 'A' logo, while the application was in respect of a stylised logo containing the words 'Alpine Pro Sportswear & Equipment':





The applicant’s goods included rucksacks and other goods in Class 18, sleeping bags in Class 24, and "clothing, footwear and headgear" in Class 25 of the Nice Classification. The earlier mark was registered for identical goods in Class 18, and "ski footwear and headgear; skiwear" in Class 25.
 
The General Court held that the word 'alpine' dominated the overall impression of the marks, with the result that consumers would retain it in their memory and the other elements were negligible. Thus, 'alpine' was the dominant element of both marks.
 
The court rejected the applicant’s argument that its mark was a compound mark and was visually dissimilar. The other elements of the applicant’s mark were considered quite simple, whereas the word 'alpine' dominated the visual impression: the marks were thus visually similar. Rather oddly, the General Court held that the word 'alpine' was represented in both signs in “an almost identical manner”, despite having different typefaces, use of italicisation in the applicant’s mark and stylised letters 'A' in both, which factors were not mentioned by the General Court.
 
The marks were held to be phonetically almost identical, despite the additional words 'Pro Sportswear & Equipment' in the application, which were held to occupy a secondary position in the mark and to be unlikely to be pronounced by the public. 
 
The marks were held to be conceptually similar to those who understood the meaning of 'alpine' or whose local language equivalents were not far removed (in this case, English, French, Italian, German and Spanish). Ironically, considering the weight which was given to the common 'alpine' element, the additional words 'Pro Sportswear & Equipment' were held to be unlikely to play a decisive role in distinguishing the marks because they were in widespread use in the trade (and they had a secondary position in the mark).
 
It is expected that issues involving marks with descriptive terms will continue to be a significant area of debate for trademark attorneys, trademarks offices and the courts.
 
Niamh Hall, FRKelly, Dublin and Belfast

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