No likelihood of confusion between OLI and OLAY, says CFI

European Union
In The Procter & Gamble Company v Office for Harmonization in the Internal Market (OHIM) (Case T-240/08, July 8 2009),the Court of First Instance (CFI) has held that the trademarks OLI and OLAY were dissimilar. 
Laboratorios Alcala Farma SL (Spain) sought to register the mark OLI (written in stylized lower-case lettering) as a Community trademark (CTM) for goods in Classes 3 and 5 of the Nice Classification. The mark featured the letter 'O' as a large circle in a light colour, surrounded by a dark line which was narrower at the top, the letters 'L' and 'I' being pointed in shape at their base, giving the impression that they had been drawn with a paintbrush.
The Procter & Gamble Company (P&G) lodged an opposition based on two earlier CTM registrations for the word mark OLAY. One of the marks covered goods in Class 3, while the other covered goods in Class 5. The Opposition Division of OHIM found that the goods were identical and highly similar, but concluded that the marks were dissimilar. The Second Board of Appeal of OHIM affirmed, pointing out that the marks were dissimilar from a visual and aural point of view. P&G appealed to the CFI.
According to the CFI, the Board of Appeal was correct in finding the marks to be visually dissimilar based on:
  • the graphical representation of the mark applied for;
  • the difference in length between the marks; and
  • the different impressions conveyed by the endings 'i' and 'ay'.
Moreover, because the mark applied for is pronounced with a tonic accent on the last syllable, the difference in relation to the second syllable of the marks gave them a different aural impression.
The CFI also held that the Board of Appeal’s finding that there was no likelihood of confusion between the marks was justified by the fact that consumers display a higher level of attention when buying medicinal products. Medical professionals pay a high degree of care when prescribing medicinal products and end consumers are well informed, observant and circumspect. 
The action was thus dismissed.
The decision may seem slightly surprising at first sight due to the fact that the marks shared the same beginning ('ol') and that the goods were identical or highly similar. OHIM usually holds that there is a likelihood of confusion where two marks share the same prefix.
However, the short length of the marks, combined with the graphic representation of the mark applied for, played a significant role in the proceedings. Under EU case law, short marks will not usually be held to be confusingly similar, even if they differ by only one letter. However, this remains a case-by-case analysis depending on:
  • the exact number of letters in the marks;
  • the number of identical letters and their position in the marks; and
  • the position occupied by the dissimilar letter(s).
For example, on July 7 2009 the Cancellation Division of OHIM held that the marks EVION and EVIOL were similar because:
  • they were identical in length;
  • they coincided in their first four letters; and
  • their ending was not accentuated.  
The decision in the present case illustrates the fact that the graphical elements of a mark can play a strategic role - the particular shape of the letters in the OLI mark amplified the differences that already existed between the words 'oli' and 'olay'.
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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