MPAY24 registration puts pay to MPAY application

In mPAY24 GmbH v ULTRA doo Proizvodnja elektronskih naprav, the Office for Harmonization in the Internal Market's (OHIM) Opposition Division has upheld mPAY24 GmbH's opposition against the registration of MPAY as a figurative Community trademark.

mPAY24 GmbH first applied to register its own MPAY24 mark in 2002. The mark was initially rejected by the examiner on the grounds that:

• the element 'PAY' was readily understandable;
  
  
• the number '24' was a reference to a 24-hour service; and
  
  
• the letter 'M' at the beginning of the mark was not distinctive.

In addition, the examiner found examples of third-party use of the mark on the Internet, including use by Vodafone. According to the examiner, the sign as a whole lacked distinctiveness. However, following lengthy argumentation, the examiner allowed the application in 2005.

On the basis of its MPAY24 Community trademark, mPAY24 GmbH obtained a preliminary injunction from a court in Hamburg against Vodafone to prevent the latter's use of a MPAY mark (August 4 2005, 315 o 536/05). The German court found the trademark MPAY24 to be sufficiently distinctive and Vodafone's MPAY mark to be confusingly similar to that mark.

Back at OHIM, Slovenian company ULTRA doo Proizvodnja elektronskih naprav applied to register the word mark MPAY and also a figurative MPAY mark. The examiner rejected the word mark application. However, the figurative mark was accepted.

mPAY24 GmbH brought an opposition against ULTRA's figurative MPAY mark. The Opposition Division upheld the opposition, reasoning that the MPAY mark was likely to cause confusion with the MPAY24 mark.

It is interesting to note that despite the difficulties that mPAY24 GmbH had when initially registering its MPAY24 mark, in its decision, the Opposition Division has attributed a high degree of distinctiveness to the mark since it refused to allow registration of ULTRA's MPAY mark even for classes of services not covered by the earlier registration.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna