O STORE held to be invalid for certain services

In Oakley Inc v Office for Harmonization in the Internal Market (OHIM) (Case T-116/06, September 24 2008), the Court of First Instance (CFI) has held that the trademark O STORE was invalid for certain services. The CFI stated that in order to assess the likelihood of confusion between two signs, it is necessary to consider the nature of the goods purchased, the needs satisfied by the sale of the goods and the types of distribution channels.

On February 7 2001 Oakley Inc filed an application for the registration of the mark O STORE as a Community trademark under the Community Trademark Regulation (40/94) for the following services in Class 35 of the Nice Classification, among others:

“retail and wholesale services, including online retail store services, retail and wholesale of eyewear, sunglasses, optical goods, clothing, headwear, footwear.”

The application was accepted on February 11 2002.

On October 14 2002 Venticinque Ltd applied for a declaration of invalidity of the O STORE mark under Articles 52(1)(a) and 8(1)(b) of the regulation. The application was based on its earlier word mark THE O STORE, which was registered on December 28 2000 for goods in Classes 18 and 25 of the Nice Classification, including “leather and imitations of leather, goods made of these materials and not included in other classes, namely suitcases, bags and handbags”, and “clothing, namely suits, dress shirts, trousers, jacket, blousons, foulards and polo t-shirts”.

On June 18 2004 the Cancellation Division upheld Venticinque's application for a declaration of invalidity with regard to certain services (“retail and wholesale of clothing, headwear, athletic bags”) on the grounds that the wording of these services in the Nice Classification was broad and could also include the sale of the goods covered by the earlier mark.

However, the Cancellation Division dismissed the application with regard to the services consisting of "retail and wholesale of eyewear, sunglasses, optical goods and accessories, watches, timepieces, jewellery, decals and posters" on the grounds that services relating to those goods did not share the same distribution channels as the goods covered by the earlier mark.

Both parties appealed to the Board of Appeal of OHIM. The board upheld the decision of the Cancellation Division, finding that the services covered by the O STORE mark were:

very similar in nature and in purpose to the goods covered by the earlier mark; and
identical in method of use and in distribution channels to the goods covered by the earlier mark.

However, the board held that there was a likelihood of confusion only with regard to “retail and wholesale services, including online retail store services”. Because Oakley had not limited the services to specific goods, the general wording under Class 35 included the goods covered by the earlier mark. The parties appealed to the CFI.

In reaching its decision, the CFI examined:

the similarity of the goods and services offered by the parties;
the similarity of the two marks; and
the likelihood of confusion between the marks.

With regard to the similarity of the goods and services, the CFI held that the Board of Appeal had correctly found that the goods relating to the services covered by the O STORE mark were similar to the goods covered by the earlier trademark.

With regard to the similarity of the marks, the CFI held that the signs were very similar since they contained the identical element ‘o store’, the only difference being the omission of the non-distinctive article ‘the’.

Finally, the CFI held that the board was correct in finding that there was a likelihood of confusion between the marks for "retail and wholesale services, including online retail store services", but little likelihood of confusion with regard to services consisting of "retail and wholesale of eyewear, sunglasses, optical goods and accessories, watches, timepieces, jewellery, decals and posters".

The CFI considered that the nature of retailing of eyewear or optical goods on the one hand, and of items of clothing and leather goods on the other, was different. Moreover, their sale did not satisfy the same needs. In particular, the CFI observed that the earlier trademark did not cover, directly or indirectly, goods like eyewear, sunglasses, optical goods and accessories, and noted that eyewear products cannot be considered to be similar or complementary to clothes or leather goods.

The CFI dismissed the action and ordered each party to pay its own costs.

Margherita Bariè and Pietro Pouchè, Carnelutti Studio Legale Associato, Milan

O STORE held to be invalid for certain services

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