OHIM blocks registration of KAZAA

In SpeedWare Software GmbH v Sharman License Holdings Limited, the Opposition Division of the Office for Harmonization in the Internal Market (OHIM) has upheld an opposition to the registration of KAZAA as a Community trademark. It ruled that the mark was phonetically similar in German and covered similar goods and services to an earlier CASA mark.

Sharman License Holdings operates the controversial Kazaa peer-to-peer file-sharing platform. It applied to register KAZAA as a Community trademark for goods and services in Classes 9, 35, 38, 41 and 42 of the Nice Classification, relating to computer hardware and software. SpeedWare Software GmbH, a German company, opposed registration on the grounds that it was confusingly similar to its earlier national registration for CASA used in conjunction with database software for real estate management.

The Opposition Division of the OHIM upheld the opposition and rejected the application. It held that, based on an overall comparison, there were significant phonetic similarities between the marks in German. The Opposition Division also stated that the goods and services set out in the KAZAA application, namely computer software and hardware, were similar to those covered by the earlier CASA registration.

It will be interesting to see whether Sharman appeals to the OHIM’s Board of Appeal as, according to the German Patent and Trademark Office’s trademark register, CASA is only registered for software limited to housing and real estate management. The history of the mark reveals that SpeedWare requested that its scope be partially cancelled on May 3 2001 - seven months prior to the date on which it filed its notice of opposition. This fact should therefore have been considered by the Opposition Division. However, an examination of its reasoning suggests that it was not. If it had based its analysis on the German CASA mark’s limited scope of registration, it is likely that the Opposition Division would have come to a different conclusion regarding the similarity between the parties’ goods and services.

Should Sharman decide to appeal, it could also claim that the Kazaa platform has acquired a high profile in recent times, meaning that the KAZAA mark is well known to the public. Therefore, it could argue that KAZAA is unlikely to be confused with the earlier but less well-known CASA mark.

Georg Terhorst, Bird & Bird, Düsseldorf