OHIM need not defend Board of Appeal decisions

In its decision in theVENADO Case, the European Court of First Instance (CFI) has overturned an Office for Harmonization in the Internal Market (OHIM) Board of Appeal's decision in an opposition case. The OHIM Opposition Division had found in favour of the opponent, Mast-Jägermeister AG. On appeal, the OHIM Board of Appeal reversed, finding no confusing similarity between the marks. On appeal to the CFI, OHIM sided in effect with the appellant, Mast-Jägermeister, leaving the applicant, Licorera Zacapaneca SA, to defend the lack of similarity verdict.

The case arose after Licorera filed three figurative marks comprising a deer's head facing forward in a circle and the stylized word element 'venado', which is Spanish for 'deer'. Mast-Jägermeister lodged oppositions against these three applications based on two figurative marks featuring a deer's head and the cross of Saint Hubert, which was surrounded by a halo.

The OHIM Opposition Division found that the marks as a whole were confusingly similar, there being a likelihood of confusion in Spain.

On appeal, The OHIM Board of Appeal reversed, finding that there was no confusing similarity in any part of the European Union, despite the identity of certain goods covered by the marks at issue and the existence of "clear similarities" between the marks. The board found that the marks were visually distinct, in that there were "manifest and striking" differences between the conflicting figurative signs. Firstly, there was the absence, in the marks applied for, of the cross of Saint Hubert surrounded by a halo, which is prominent in Mast-Jägermeister's marks. Secondly, there were differences in the representation of the respective deer head designs. Lastly, the marks applied for included the 'venado' stylized word element in colour. Phonetically, the board found that the marks at issue were also distinct, since only the marks applied for contain a word element. Conceptually, the board also found that there was no great conceptual similarity between the conflicting marks. Although both marks comprised a deer's head, the presence of other features, such as the cross in the earlier marks and the word element 'venado' in the marks applied for, distinguished them conceptually. Thus, the board found visual, phonetic and conceptual differences.

Mast-Jägermeister appealed to the CFI with the primary head of claim that the board's decision be annulled. However, OHIM, which was named as defendant in the CFI proceeding, also called for annulment of the board's decision. Licorera intervened with a head of claim that the appeal be dismissed.

The CFI first noted that while OHIM does not have the requisite capacity to bring an action against a decision of a Board of Appeal, conversely it cannot be required to defend systematically every contested decision of a Board of Appeal or automatically to claim that every action challenging such a decision should be dismissed.

The CFI next held that the board in the case at hand had erred as regards the visual, phonetic and conceptual differences. Visually, the shared element of the deer's head facing forward in a circle dominates the conflicting signs on account of its eye-catching appearance and its size. The minor visual differences did not alter the finding that there is significant visual similarity between the conflicting marks. It was improper to consider phonetic differences as Mast-Jägermeister's marks have no verbal element. In addition, the marks must be considered conceptually similar. Based on an overall assessment, the CFI found a likelihood of confusion and annulled the board's decision.

Peter Gustav Olson, Plesner, Copenhagen