Limited scope of protection of single-letter marks highlighted

European Union
In ara AG v Office for Harmonisation in the Internal Market (OHIM) (Case T-174/10, September 22 2011), the General Court has dismissed an appeal against a decision of the First Board of Appeal to register a Community trademark (CTM) which had been challenged as being likely to be confused with an earlier national mark.

In 2006 Allrounder SARL obtained an international trademark with CTM designation for goods in Classes 18 (leather and leather imitation goods) and 25 (shoes) of the Nice Classification in the below form:

A German company, ara AG, brought opposition proceedings in 2007 on the basis of the German mark A, without any stylisation, which had been registered since 2004 for in part identical and in part similar goods in Classes 18 and 25. The opposition was brought on the grounds of a violation of Articles 8(1)(a) and (b) of the Community Trademark Regulation (40/94) (now Articles 8(1)(a) and (b) of the Community Trademark Regulation (207/2009)), but the present appeal proceeded upon the ground of violation of Article 8(1)(b) only.

The Opposition Division of OHIM rejected the opposition in 2009 and ara AG appealed. In early 2010 the First Board of Appeal of OHIM also rejected the opposition. In its view, the marks could not be confused since:
  • the relevant public was the average German consumer, who would pay a moderate level of attention to the marks at the point of sale;
  • it was not challenged that the goods were in part identical and in part similar;
  • the marks had weak visual and conceptual similarity and could not be compared phonetically; and
  • the national mark had weak distinctiveness.
ara AG appealed to the General Court for recourse, on the same ground.

As highlighted by the Opposition Division, the parties had agreed that the goods were in part identical and in part similar, so the court did not consider this point in its decision. However, the parties had differing opinions on the level of attention that a person would pay to the marks at the point of sale and the level of similarity between the marks, so the court focused on these issues.

First, the court considered that the relevant public was the average German consumer, as the earlier mark was registered in Germany only. It also reiterated that:
  • the level of attention paid by a person to a trademark varies according to the type of goods; and
  • people generally have an imperfect recollection of trademarks.
The parties’ positions were at odds:
  • ara AG contended that the relevant public would have a low level of ability to differentiate between the marks;
  • OHIM considered that the level of attention would be average; and
  • Allrounder considered that the consumer would have ‘sustained’ attention.
The court confirmed OHIM’s position that the level of attention at the point of sale was average. It highlighted factors such as that the goods were mass market consumer goods and, as such, the level of attention could never be more than average. However, it conceded that the goods in the application were, in the main, fashion or sport items for which the consumer would pay particular attention to the choice of brand.

With regard to the comparison of the marks, the court followed the guiding principle when comparing potentially similar marks and reviewed them as a whole (as a consumer would do), taking into account distinctive and dominant parts, as a dominant similarity might override a less dominant difference.

Visually, ara AG’s only argument was that the marks were similar because each used the capital letter ‘A’. The court took this analysis further, noting that the mark applied for had a particular style, using thick bold lines and incorporating two triangular horns which were dominant in the mark and effectively counteracted any similarity with the earlier mark. Therefore, there was only a weak degree of similarity between the marks. Conceptually, the court took the view that the style of the mark applied for, particularly the two triangles resembling horns, would override any similarity arising from the letter ‘A’. Phonetically, the court aligned its decision with the Board of Appeal’s, noting the reality that a consumer would not pronounce the mark applied for and that the particular styling of the mark would encourage the consumer to describe the mark rather than speak it.

Turning to the likelihood of confusion, the court highlighted case law showing that a weak degree of similarity between the marks could be counteracted by a strong degree of similarity between the conflicting goods, and vice versa. ara AG sought to argue that the earlier mark had moderate distinctiveness, noting that letters were specifically expressed to be registrable signs under Article 4 of the regulation and that the capital ‘A’ was not at all descriptive of the goods. By contrast, OHIM and Allrounder had concluded that distinctiveness (if any) was weak and put forward evidence that marks comprising a single letter were often used in the goods market in question. The court found this evidence convincing.

Having determined that the marks had significant differences and that the earlier mark had only weak distinctiveness in the market, the court confirmed that there was no likelihood that the mark applied for, if registered, would be confused with the earlier A mark, despite the fact that the goods in the application were in part identical (and in part similar). The court was not persuaded to change its decision by ara AG’s submissions, which included cases from the German courts where it had been decided that there was a risk of confusion in similar circumstances. Accordingly, the court dismissed the appeal, upholding the board’s decision in full.
 
While there is no bar to the registration of single-letter trademarks (as expressly recognised by the Court of Justice of the European Union in OHIM v Borco (Case C-265/09)), this case is a good example that the scope of protection of single-letter marks is rather limited, particularly where such marks are the norm for the relevant goods in question.

Ellie Forrest-Charde and Chris McLeod, Squire Sanders & Dempsey (UK) LLP, London

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