No likelihood of confusion between MI(S)SAKO figurative marks

European Union
In Frag Comercio Internacional SL v Office for Harmonization in the Internal Market (OHIM) (Case T-162/08, November 11 2009), the Court of First Instance (CFI) has upheld a decision of the Second Board of Appeal of OHIM in which the latter had dismissed Frag Comercio Internacional SA's opposition against the registration of the trademark GREEN BY MISSAKO (and sun design).

Frag Comercio opposed the registration of the mark on the basis of Article 8(1)(b) of the Community Trademark Regulation (40/94), citing its earlier Community and Spanish registrations for the trademark MISAKO for goods in Classes 18 ("leather goods") and 25 ("clothing") and services in Class 35 (“retail services in shops”) of the Nice Classification. The opposition was directed against all the goods and services covered by the GREEN BY MISSAKO mark in Classes 3 ("perfumery"), 25 ("clothing") and 35 (including "business advisory and management services").

The Opposition Division of OHIM dismissed the opposition, finding that there was no likelihood of confusion under Article 8(1)(b) of the regulation. The Second Board of Appeal of OHIM affirmed and Frag Comercio appealed to the CFI.

First, the CFI considered that the word 'green' and the representation of the sun dominated the mark applied for due to:
  • their size;
  • their position in the mark; and
  • the “original typeface” in which the word 'green' was reproduced.
In addition, the words 'by Missako' were considered to be illegible. Consequently, they were negligible within the overall impression created by the mark applied for, which was likely to be referred to by consumers as GREEN, rather than GREEN BY MISSAKO.
Turning to the comparison of the goods and services, the CFI noted that the goods in Classes 18 and 25 covered by the earlier mark were identical or similar to the goods covered by the GREEN BY MISSAKO mark in Class 25. However, the perfumery goods in Class 3 were found to be dissimilar to the leather goods and clothing articles in Classes 18 and 25. Moreover, the CFI held that the “retail services in shops” covered by the earlier mark were “too vague to enable a proper comparison to be made" with the services covered by the mark applied for.

In conclusion, the CFI found that “the visual, phonetic and conceptual differences between the signs are sufficient grounds for finding that there is no likelihood of confusion in the perception on the part of the relevant public”, despite the fact that some of the goods were identical or similar. The action was thus dismissed.

One may wonder whether the outcome would have been different if the applicant had sought to register GREEN BY MISSAKO as a word mark - particularly in light of the weak distinctive character of the word 'green' and the inherent distinctiveness of 'by Missako'.

Moreover, the CFI's conclusion that it was impossible to compare the services in Class 35 raises the issue of whether the owners of Spanish marks covering “retail services” should amend their registration to specify the goods to which those services relate before filing an opposition against a Community trademark application. Contrary to the criteria laid down by the European Court of Justice in Praktiker Bau- und Heimwerkermärkte AG v Deutsches Patent- und Markenamt (Case C-418/02), the Spanish Trademark Office continues to consider “retail services in shops” - with no further reference to the goods that are retailed - as an acceptable specification of services.
Celia Sueiras, Garrigues, Madrid

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