No likelihood of confusion despite aural similarity

European Union
In MIP Metro Group Intellectual Property GmbH & Co KG v Office of Harmonisation in the Internal Market (OHIM) (Case T-525/09, September 8 2011), the General Court has rejected MIP Metro Group’s appeal against a decision of the First Board of Appeal of OHIM in which the latter had held that there was no likelihood of confusion between the figurative marks METRO and METRONIA.

In October 2003 Metronia SA applied for the registration of the figurative mark METRONIA as a Community trademark for goods and services in Classes 9, 20, 28 and 41 of the Nice Classification:

The goods included:
  • “consumer electronics, scientific monitoring apparatus and apparatus for recording, transmission or reproduction of sound or images” in Class 9;
  • “amusement arcade furniture” in Class 20;
  • “games and the services” in Class 28; and
  • “gaming, providing amusement arcade facilities and games provided online” in Class 41.
On publication, MIP Metro Group filed an opposition under Article 8(1)(b) of the Community Trademark Regulation (40/94), now the Community Trademark Regulation (207/2009), on the basis of its earlier German registration for the figurative mark METRO, which is registered for goods and services in Class 9, 20, 28 and 41:

In August 2006 the Opposition Division of OHIM upheld the opposition. Metronia appealed. In May 2007 the Second Board of Appeal of OHIM overturned the Opposition Division’s decision in its entirety, holding that there was no likelihood of confusion. Although the goods and services covered by the conflicting marks were identical, the Board of Appeal held that the signs were visually, phonetically and conceptually dissimilar.

On MIP Metro Group’s appeal, the General Court annulled the first decision of the Second Board of Appeal and held that, while there was no visual or conceptual similarity between the signs, there was, contrary to the Board of Appeal’s findings, a certain aural similarity, so that the Board of Appeal incorrectly assessed the likelihood of confusion.

The case then went back to OHIM. In October 2009 the First Board of Appeal rejected the opposition. In essence, the board held that, notwithstanding a certain aural similarity between the signs at issue, there was no likelihood of confusion, having regard to the nature of the goods and services concerned and the way in which they are marketed.

MIP Metro Group appealed to the General Court for a second time. It argued that the First Board of Appeal was incorrect in finding that the signs were conceptually different. Secondly, it claimed that the board had underestimated the significance of the aural similarity in assessing whether there was a likelihood of confusion.

The General Court disagreed with MIP Metro Group. It noted that the court had already held in its first decision that there is a conceptual difference between the signs at issue, as METRONIA might call to mind a fictitious place such as Metropolis or might be regarded as a neologism, unlike METRO.

Moving on to the assessment of a likelihood of confusion between METRONIA and METRO, the court agreed with the board’s assessment that, notwithstanding a certain aural similarity between the signs, that there was no likelihood of confusion. The court referred to its earlier case law and held that, in the context of the global assessment of a likelihood of confusion, the visual, aural or conceptual similarity of the signs in conflict do not always carry the same weight and, therefore, the objective conditions under which the marks may be marketed must be analysed.

In that respect, the court agreed with the board that, in particular, in relation to the goods at issue, the consumers will buy them after a comprehensive examination of their respective specifications and technical characteristics, firstly upon the basis of information that appears in specialist catalogues or on the internet, and then at the point of sale, which indicated that there will be a visual examination both of the goods and of the mark which they bear. It therefore rejected MIP Metro Group’s arguments that the average consumer may equally be let to purchase the goods or services following a television advertisement or verbal recommendation. The General Court endorsed the Board of Appeal’s conclusion that the visual aspect for the comparison of the marks is more important than the aural aspect. Therefore, the court held that the board was correct in rejecting the opposition, notwithstanding the identical goods and services and aural similarity. As a result, the General Court dismissed MIP Metro Group’s appeal.

It will be interesting to see whether MIP Metro Group takes the case further to the Court of Justice of the European Union, having already been twice at the General Court. Whether a further appeal would be crowned with success is, of course, doubtful. Contrary to the traditional approach of the German courts, which tend to confirm a likelihood of confusion where only one of the factors for similarity (ie, aural, visual and conceptual similarity) is fulfilled, the Luxembourg courts put less weight on one single factor, but allow OHIM and the Community trademark courts a more flexible, albeit subjective, approach within the framework of the global assessment of a likelihood of confusion.

Florian Traub, Squire Sanders & Dempsey (UK) LLP, London

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