OFFSHORE LEGENDS opposition upheld on appeal

In Offshore Legends v Office for Harmonization in the Internal Market (OHIM) (Joined Cases T-305/07 and T-306/07, September 16 2009), the Court of First Instance (CFI) has dismissed an appeal against a decision of the Board of Appeal of OHIM in which the latter had upheld, in part, oppositions to applications for the registration of the trademark OFFSHORE LEGENDS.

In January and May 2003 Offshore Legends applied to register the trademark OFFSHORE LEGENDS (and boat design) - in black and white and in colour - in Classes 18 and 25 of the Nice Classification. In December 2003 French company MD opposed the applications based on:

• an earlier French registration for the trademark OFFSHORE ONE OFFSHORE 1 (and laurel design); and
• a corresponding international registration designating Germany, Benelux, Spain, Italy and Switzerland, dated July 2003.

The opposition was based on Articles 8(1)(a) and (b) and Article 8(5) of the Community Trademark Regulation (40/94), and was directed against all the goods designated in the applications. MD's marks, which were registered in relation to goods in Classes 16, 18 and 25, were subsequently assigned to another French company, Acteon, which continued the opposition proceedings. The Opposition Division of OHIM rejected the oppositions in April 2006.

Acteon appealed. Overturning the decisions partially, the Board of Appeal of OHIM held that:

• the goods in Classes 18 and 25 were identical or, at least, highly similar to the goods covered by the French registration; and
• the similarities between the marks were sufficient to create a likelihood of confusion.

However, the board rejected the oppositions in relation to the other goods on the grounds that they were either dissimilar or insufficiently similar. The board also partially rejected the oppositions based on the international registration because it had been registered after the application dates of the opposed applications. Offshore Legends appealed to the CFI. It raised two pleas, alleging infringement of Articles 43(2) and 8(1)(b) of the regulation.

First, the CFI held that the board had rightly observed that the question of the use of the earlier marks had not been effectively raised by Offshore Legends before the Opposition Division in the absence of an express request. The CFI underlined that pursuant to Articles 43(2) and (3) of the regulation, for the purposes of examining an opposition, the earlier mark is presumed to have been put to genuine use as long as the applicant has not requested proof of that use. Upon presentation of such a request, the opponent would have to demonstrate genuine use (or the existence of proper reasons for non-use) of its mark, otherwise the opposition would be dismissed.

The CFI also rejected Offshore Legends’s claim that its correspondence with OHIM contained the request. The CFI found that the correspondence showed a response to the evidence submitted by MD without expressly requesting proof of use of the earlier mark and without mentioning Article 43(2). However, following the CFI’s own case law, genuine use of the earlier mark is a matter which, once raised by the applicant, must be settled before a decision is issued on the opposition. Therefore, OHIM did not have to assess the evidence submitted by MD for the purposes of Article 43(2) without an express request. The documentary evidence submitted by the opponent could not replace such a request, even if it transpired that the earlier mark was not used as registered.

In response to the second plea, the CFI held that in the present case, the relevant territory was France and, in view of the designated goods, the relevant public was the general public, which was well informed and reasonably observant.

With regard to the similarity between the marks, the CFI stated that the board was right to examine the distinctive character of the word 'offshore', which was the common element of the marks, and to analyze whether this common element was dominant. The board had divided the relevant public into two groups based of their understanding of 'offshore'.

One consisted of the relevant public which understood 'offshore' as relating to water sports - the meaning endorsed by the Opposition Division. To this group, the element 'offshore' would thus be weak, but not disregarded. However, the board had understood from dictionaries that 'offshore' had several potential meanings and, therefore, questioned whether a substantial part of the relevant public understood the word solely as a reference to water sports.

The other group consisted of the consumers who did not understand that 'offshore' designated water sports. To this group, the distinctive character was average and, in view of the low distinctive character of the other elements, 'offshore' would be more important. The CFI took the view that the board was entitled to assess the inherent distinctive character of the mark on the basis of dictionaries which were not submitted to the parties.

The CFI also observed that for the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services at issue as coming from a particular undertaking and, therefore, to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in light of whether it is at all descriptive of the goods or services at issue. In the present case, Offshore Legends had been wrong to state that 'offshore' was descriptive and that its distinctive character was low.

For the consumers who did not understand 'offshore' as relating to water sports, the CFI found that the term was not descriptive in view of the goods covered by the earlier registration (eg, clothing and bags). For the remaining public, the element was not of low distinctive character in respect of the goods. The term 'offshore' could be descriptive of some of the goods, but not all of them.

Therefore, the CFI held that the board had correctly stated that:

• 'offshore' retained an independent distinctive character; and 
• the other components of the marks were not particularly distinctive and, therefore, could not render 'offshore' negligible.

In respect of the earlier mark, the elements '1' and 'one', in isolation, were evocative of the winner of a competition, especially in relation to sports goods, and the laurel device was commonly used as decoration. As rightly stated by the board, 'offshore' was also enhanced by the repetition of the term. In respect of the opposed mark, the board had been right to stress the abstract and neutral aspect of the device. Offshore Legends argued that its boat device could be more memorable to the public, but the CFI agreed with the board that the consumers would link the device to the term 'offshore' and would thus keep that term in mind. The element 'legends' would be self-explanatory and would have a laudatory connotation for sports goods.

Finally, the CFI stated that the board had correctly decided that for the public who understood 'offshore' as relating to water sports, the marks were similar phonetically and conceptually, but the visual similarity was low. For the other group, the board had correctly stated that the importance of the word element 'offshore' would increase in the overall impression of the mark, which would in turn increase visual and phonetic similarities, even in the absence of conceptual similarity. Consequently, in view of the degree of similarity between the marks and the goods, the board had been right to state that there was a likelihood of confusion.

The appeal was thus dismissed.

The decision stresses the importance of making a formal request for evidence of use in opposition proceedings where the mark in question has been registered for over five years. It also highlights the importance of assessing the similarities between two figurative marks in light of their distinctive and dominant elements.

Emilie Scheffer and Chris McLeod, Hammonds LLP, London