OHIM held to have assessed similarity of marks in contradictory manner

European Union
In El Jirari Bouzekri v Office for Harmonisation in the Internal Market (OHIM) (Case T-207/09, September 27 2011), the General Court has held that the Second Board of Appeal of OHIM had committed an error of law in finding a lack of similarity between the marks at issue under Article 8(1)(b) of the Community Trademark Regulation (40/94), and a sufficient degree of similarity between the same marks under Article 8(5) of the regulation. 
  
Mustapha El Jirari Bouzekri applied to register the figurative mark NC NICKOL as a Community trademark (CTM) for "sunglasses, spectacles, frames and spectacle cases" in Class 9 of the Nice Classification:



The application was opposed by Nike International Ltd based on its earlier figurative CTM NIKE, which is registered for various types of apparatus in Class 9 and for "clothing, footwear and headgear" in Class 25:

The opposition was based on:
  • Article 8(1)(b) (likelihood of confusion); and
  • Article 8(5) of the regulation (use without due cause of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark).
The Second Board of Appeal held that there was no likelihood of confusion within the meaning of Article 8(1)(b) “since the earlier sign and the mark applied for are not similar in the case at hand”. However, the board found that the conditions of Article 8(5) were fulfilled, as the marks were sufficiently visually similar to cause the public to establish a link between them.
 
The General Court disagreed and annulled the decision of the board. The court held that “[t]he concept of similarity between the marks at issue is the same in the case of a refusal to register a mark applied for because of a likelihood of confusion […] and of a refusal because of damage to the reputation of an earlier mark […]".

Another issue in this case was whether Bouzekri had set out the grounds of appeal "coherently and intelligibly": Bouzekri's head of claim adopted the arguments on the similarity of the marks contained in an earlier decision of the Opposition Division in a separate case involving the same marks, but different goods and services. According to the General Court, this was allowed since the reasoning was “sufficiently clear and precise to allow OHIM to prepare its defence”.
 
Although these opposition proceedings have been pending since July 2006, the question of whether the NC NICKOL mark is similar to Nike's mark is still unanswered.
 
Paul Reeskamp, Klos Morel Vos & Schaap, Amsterdam

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