No likelihood of confusion despite similarity of marks and services

In Event Holding GmbH & Co KG v Office for Harmonisation in the Internal Market (OHIM) (Case T-353/11, March 21 2013), the Sixth Chamber of the General Court has confirmed a decision of the Second Board of Appeal of OHIM finding that there was no likelihood of confusion between the figurative trademark EVENTER EVENT MANAGEMENT SYSTEMS and the earlier word mark EVENT.

Spanish company CBT Communicacion Multimedia SL filed an application for the registration of the figurative Community trademark EVENTER EVENT MANAGEMENT SYSTEMS covering, among others, services in Classes 35 and 41 of the Nice Classification:

German company Event Holding GmbH & Co KG lodged an opposition based on its German word mark EVENT for services related to the hotel sector, among others. The Opposition Division of OHIM dismissed the opposition, stating that there was no similarity between the services covered by the trademarks. The Second Board of Appeal of OHIM found that some of the services in Class 35 were similar, but nevertheless dismissed the appeal on the grounds that there was no likelihood of confusion.

The Opposition Division had found that the services covered by the trademarks were completely different as regards their nature and intended purpose, and that they were neither complementary nor in competition with each other. By arguing this way, the Opposition Division did not carry out further examinations as to whether the trademarks were similar, but dismissed the opposition due to the lack of similarity of the services.

In contrast, the Second Board of Appeal found a similarity between "business management and business administration services" covered by the contested trademark in Class 35 and the "development of hotels" covered by the earlier trademark, stating that "business management services" must be understood as "business management services in the hotel sector" falling within Class 35. Moreover, the Board of Appeal found that there was a certain similarity between the trademarks from a visual, phonetic and conceptual point of view. However, the marks were similar only to a low degree, and such similarity was insufficient to create a likelihood of confusion. In this regard, the Board of Appeal also took into consideration the fact that:

• the relevant public consisted of professionals with a high degree of attention; and
• the earlier trademark EVENT had a weak distinctive character.

The latter argument was the only one that was not approved by the General Court, which argued that the distinctive character of the earlier trademark was average with regard to hotel-related services. Besides this exception, the General Court affirmed the Board of Appeal's decision in its entirety and dismissed the appeal.

This decision highlights once again that, even if the signs and the goods/services are similar, this does not automatically mean that there is a likelihood of confusion - the degree of distinctiveness of the marks, as well as the degree of attentiveness of the relevant public, must also be considered. As a result, the fact that the marks are similar might not be sufficient to create a likelihood of confusion, even if the goods/services are also similar.

In addition to ruling on the likelihood of confusion, the General Court considered certain formal aspects concerning the submission of documents and arguments for the first time before the court. While, in general, documents which were not presented before OHIM cannot be taken into consideration by the court, case law cited before the court for the first time can be examined, although the court is not bound by national case law.

Tanja Hogh Holub, Beiten Burkhardt Rechtsanwaltsgesellschaft mbH, Munich