OHIM limits protection afforded to short marks

In STO Aktiengesellschaft v STC Sanitary Engineering Technical Completion Srl, the Office for Harmonization in the Internal Market (OHIM) has ruled that the marks STC and STO are not confusingly similar, even though they are used on identical goods. The decision indicates that the OHIM considers the scope of protection for short marks very narrow.

STC Sanitary Engineering Technical Completion, an Italian company, applied to register STC as a Community trademark for goods in Classes 6, 9, 11 and 17 of the Nice Classification. STO, a German company, filed an opposition action on the grounds that the STC mark was confusingly similar to its STO Community trademark and that the marks applied to the same goods in Class 17.

The OHIM dismissed the opposition. It held that there was no visual similarity between the marks, even though (i) the letters 'S' and 'T' were in the same position in each acronym, and (ii) the shape of the last letters was similar. (In contrast, a French court ruled that the marks BRIO and BRIG were visually similar because the first three letters were identical and the last letters bore a resemblance in shape.) Instead, the OHIM held that the figurative element of the STO mark (white stylized typeface on a dark oval background) made the two marks visually dissimilar.

The OHIM also considered that the earlier mark was pronounced as a one-syllable word - 'sto' - whereas STC could only be pronounced as separate letters in all the languages of the European Union. The OHIM further reasoned that even if the earlier mark were pronounced as three letters spelled out ('S', 'T', 'O'), the pronunciation of the letter 'O' is sufficiently different from the pronunciation of the letter 'C' to distinguish the marks phonetically.

Owners of short trademarks should be careful when bringing an opposition: this decision shows that the OHIM considers the scope of protection for short marks very narrow - in particular because of the relevance it placed on the difference between the last letters of the marks at issue. Indeed, the OHIM stated that (i) short marks of two or three letters are less distinctive than longer marks, and (ii) a high degree of similarity between the signs, and between the goods and services, is necessary to find a likelihood of confusion. Distinctiveness can be acquired through extensive use (eg, MGM), which can be evidenced through the following:

• invoices showing the trademark;
  
  
• revenue brought in by the mark;
  
  
• promotional expenses; and
  
  
• the mark's market share.

Eric Schahl and Jean-Philippe Bresson, Inlex Conseil, Paris