No likelihood of confusion where mark is illegible

European Union
In Stradivarius España SA v Office for Harmonization in the Internal Market (OHIM) (Case T-340/06, July 2 2008), the Court of First Instance (CFI) has upheld a decision of the Board of Appeal of OHIM in which the latter had rejected an opposition against the registration of the trademark STRADIVARI 1715.
On June 20 2001 Paolo Cassinelli applied for the registration of the figurative mark STRADIVARI 1715 for goods in Classes 14, 16 and 18 of the Nice Classification. On May 13 2002 Stradivarius España SA filed an opposition under Article 8(1)(b) of the Community Trademark Regulation (40/94) based on its earlier figurative Community trademarks STRADIVARIUS (Registrations 506469 and 1246164) for goods in Classes 14, 16 and 18. The opposition was directed at all the goods covered by the application. The Opposition Division dismissed the opposition. Stradivarius appealed.
The Board of Appeal rejected the appeal on the grounds that there was no risk of confusion between the marks, as they produced very different overall impressions. In particular, the board considered that the marks were different from a phonetic point of view since:
  • the mark applied for contained the additional element '1715'; and
  • the words 'Stradivari' and 'Stradivarius' were illegible in the marks. 
In addition, the board held that the marks were different from a conceptual point of view because the verbal elements of the signs were illegible. Stradivarius appealed to the CFI.
First, the CFI held that terms which are difficult to decipher, understand or read, such that a reasonably attentive consumer would be unable to understand such signs without analyzing them to an extent that could not be reasonably expected under normal conditions of purchase, should be considered to be illegible.
Contrary to the board, the CFI considered that the verbal element of the STRADIVARIUS marks would be understood as 'Stradivarius' by the relevant public under normal conditions of purchase. However, the CFI agreed with the board that the verbal element of the STRADIVARI 1715 mark was illegible. Although the number 1715 was legible, the word 'Stradivari' was represented in hand-written letters that could not be immediately recognized. According to the CFI, the board had correctly found that, on a first reading, consumers would perceive the mark as 'stvadinari', 'jtvadinari', 'stvdivari', 'jtdivari' or 'jeudivari'.
The CFI thus concluded that the marks STRADIVARI 1715 and STRADIVARIUS were dissimilar from a visual, phonetic and conceptual point of view. Consequently, the CFI dismissed the appeal.
Cristina Bercial-Chaumier, Bureau Casalonga & Josse, Alicante and Karina Dimidjian-Lecomte, Casalonga Avocats, Paris

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