Likely confusion in Germany means TERRANUS bites the dust

In Brinkmann v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has confirmed the OHIM Board of Appeal's decision that there was a likelihood of confusion between prior Community and Spanish registrations for TERRA (with a figurative element) and the contested Community trademark application for TERRANUS.

As the services in Class 36 of the Nice Classification covered by both parties' marks were identical, the CFI considered that the phonetic and visual similarities between the two marks resulting from the common element 'TERRA' were sufficient to create a likelihood of confusion. Specifically, it noted that despite their common Latin origins, neither sign had a specific meaning for the average consumer, in particular in Germany, which would distinguish them on a conceptual basis.

In its reasoning, the CFI also held that the element 'TERRA' was the distinctive and dominant component of the prior registrations due to its size and its position in the sign, preceding the figurative element, as well as the fact that the figurative element was a simple design that would not be particularly notable for the consumer.

Finally, the CFI also confirmed that in the case of an opposition brought on the basis of a prior Community trademark, it is sufficient to demonstrate a likelihood of confusion in one member state, in this case Germany.

In oppositions based on prior Community trademarks, therefore, strategically, the opposition will have a greater chance of success if the opponent demonstrates the likelihood of confusion in the EU member state in which the phonetic, visual and conceptual similarities are the most pronounced.

Karina Dimidjian-Lecomte, Bureau DA Casalonga-Josse, Paris