OHIM held to have erred in finding certain Class 28 goods to be similar
In i-content Ltd Zweigniederlassung Deutschland v Office for Harmonisation in the Internal Market (OHIM) (Case T-514/11), the General Court has partially annulled a decision of the First Board of Appeal of OHIM in respect of certain goods and partially annulled a decision of the Opposition Division in respect of the same goods.
i-content Ltd Zweigniederlassung Deutschland applied to register the word mark BETWIN as a Community trademark in respect of goods in Classes 25, 26 and 28 of the Nice Classification. On publication, the application was opposed pursuant to Article 8(1)(b) of the Community Trademark Regulation (207/2009) by Decathlon SA, the proprietor of the following earlier figurative mark registered for goods in Classes 25 and 28:
Registration in Classes 25 and 28 was refused by the Opposition Division of OHIM. However, registration was allowed in respect of the goods applied for in Class 26 on the basis that the goods applied for were dissimilar to the goods covered by the opponent’s registration.
This decision was subsequently upheld on appeal by the First Board of Appeal of OHIM. The General Court, making a ruling based on written submissions, partially annulled the decision of the First Board of Appeal of OHIM in respect of certain goods in Class 28, partially annulled the decision of the Opposition Division of OHIM (which the opponent’s had also argued the court was not allowed to do) in respect of the same goods, dismissed the action as to the remainder and ordered that each party pay their own costs.
In particular, the applicant had argued that there were substantial differences between “gymnastic and sporting articles (other than clothing footwear and mats)” in Class 28 for which the opponent’s mark was registered, and articles consisting of toys, games and playthings, covered by the application. The court held that the alleged identical purpose or intended purpose of the goods at issue was never proven. Furthermore, the argument that there is a certain “fluid transition between sporting articles, on the one hand, and games, on the other” put forward by OHIM was not considered a sufficient condition for a finding that the goods concerned have the same intended purpose.
However, the decision of the First Board of Appeal and the Opposition Division of OHIM that there was a likelihood of confusion amongst the relevant public between certain goods in Class 28 was upheld, as the average consumer would more readily refer to the goods in question by citing the name of the mark so that the word element ‘b’twin’ prevailed over the figurative element, which had a low distinctive character for the goods at issue.
The court concluded that the signs were globally similar in that they were visually similar, phonetically similar (at least to the members of the public having at least a basic knowledge of the English language) and it could not be ruled out that they were conceptually similar for a certain part of the relevant public (ie, the public at large) which understands English. In such cases, the court held that there was no need to take account of the case law to the effect that, in the context of a global assessment of the likelihood of confusion, conceptual differences between two signs can counteract phonetic and visual similarities between them, provided that, from the point of view of the relevant public, at least one of those signs has a clear and specific meaning, so that the public is capable of grasping it immediately.
Claire O’Sullivan, DFMG Solicitors, Dublin
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