No likelihood of confusion found between footprints marks

European Union
In ILC Trademark Corp v Garcia (Case 2290C, January 29 2009), the Cancellation Division of the Office for Harmonization in the Internal Market has rejected a request for a declaration of invalidity of a figurative Community trademark (CTM) representing stylized footprints.
Paya Garcia, a Spanish national, owns a figurative CTM (Registration 4 827 143) representing footprints for a range of goods in Class 25 of the Nice Classification. British Virgin Islands company ILC Trademark Corp filed a request for a declaration of invalidity of Garcia's mark on the basis of earlier national registrations (Austria, Benelux, Finland, France, Germany and the United Kingdom) for figurative trademarks representing footprints for goods in Class 25.
The Cancellation Division considered that the marks were visually similar, but only to a low degree. In particular, the Cancellation Division held that the marks all displayed two large rounded shapes with five smaller, rounded shapes placed along the upper periphery of each larger shape. However, the signs differed in that the contour of the larger elements of the earlier marks were bean-shaped, with the curves placed opposite and outward, creating the image of two human footprints. In contrast, the larger elements of the CTM were circular. Moreover, the CTM was depicted in grey shades with lighter 'toes', while the earlier marks were in a single colour.
The Cancellation Division also held that the marks were conceptually different. Although the marks all depicted a pair of footprints, the overall impression of the CTM was held to be dissimilar to that conveyed by the earlier marks. The Cancellation Division considered that consumers would immediately recognize the earlier marks as human footprints, whereas the footprints depicted in the CTM were fanciful and alluded to the footprint of an animal.
The Cancellation Division concluded that the public would not be led to believe that the goods sold under the CTM and the earlier marks came from the same or economically linked enterprises.  
This decision contradicts the case law of the EU courts. In L & D SA v OHIM, the European Court of Justice considered that the representation of the silhouette of a fir tree dominated the overall impression of the marks at issue. Moreover, in Mast-Jägermeister AG v OHIM, the Court of First Instance held that figurative marks representing a deer's head were similar from a visual and conceptual point of view. 
In the present case, the decision of the Cancellation Division may have resulted from the fact that all the marks on which the request for invalidation was based consisted of the same design, without significant variations. Therefore, it was more difficult to find a likelihood of confusion with a mark that presented more pronounced variations.
However, within the context of the comparison of purely figurative trademarks, the Cancellation Division seems to follow a different approach from that developed by the Opposition Division of OHIM.
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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