OHIM's approach held not to amount to granting excessive protection to weak mark

In Evonik Industries AG v Office for Harmonisation in the Internal Market (OHIM) (Case T-529/11, November 14 2012), the General Court has dismissed an action brought against the decision of the Second Board of Appeal of OHIM of June 20 2011 (Case R 1101/2010-2) in opposition proceedings between Impulso Industrial Alternativo SA and Evonik Industries AG.

On July 27 2007 Evonik filed an application with OHIM for registration of the word mark IMPULSO CREADOR as a Community trademark (CTM) for services in Classes 35, 36 and 42 of the Nice Classification.

The CTM application was published on June 23 2008 and, on August 13 2008, Imulso filed a notice of opposition to the registration of the mark applied for in respect of the services referred to above. The opposition was based on a number of earlier rights, including the figurative CTM IMPULSO, registered on April 20 2007 in Classes 35 and 42:

On April 21 2010 the Opposition Division upheld the opposition in part on the grounds that, in essence, there was a likelihood of confusion between the marks at issue for some of the services in question. Evonik filed a notice of appeal against the Opposition Division’s decision. By decision of June 20 2011, the Second Board of Appeal of OHIM dismissed the appeal.

On appeal to the General Court, Evonik put forward a sole plea, alleging infringement of Article 8(1)(b) of the Community Trademark Regulation (207/2009). In particular, it argued that the Board of Appeal had not correctly considered the different overall impression of the conflicting trademarks.

The court pointed out that a likelihood of confusion presupposes both that the marks at issue are identical or similar, and that the goods or services which they cover are identical or similar.

Before the General Court, Evonik did not dispute the definition of the relevant public endorsed by the Board of Appeal. It was thus common ground amongst the parties that the relevant public was made up of professionals in the sector concerned having a high level of attentiveness on account of the specialisation of the services at issue. Nor did the parties dispute the Board of Appeal’s finding that the services covered by the marks in question were partially identical and partially similar.

First, the General Court compared the visual, phonetic and conceptual aspects of the two signs.

The General Court found that the marks were visually similar, at least to a low degree. Although the signs were composed of a different number of words, both contained the word element ‘impulso’ and, therefore, were at least partially identical. The partially identical nature was all the more notable at the beginning of each of the signs. The word ‘creador’, which is the second word element of the mark applied for, was found less likely to draw attention than the word ‘impulso’.

Further, as regards the phonetic comparison, the General Court found that, because of the presence of the word ‘impulso’ in both signs, they were partially identical, a similarity which was all the more notable because it is at the beginning of each sign. The court found that, even though the word ‘creador’ introduces a certain difference between the marks at issue, that difference was negligible from a phonetic point of view. The way that the word is spoken did not have an appreciable phonetic impact, and did not affect the fact that the sole element of the earlier mark and the first element of the mark applied for sounded identical.

Lastly, from a conceptual standpoint, the General Court found, that, for those consumers who understand the word ‘impulso’, the marks in question would be conceptually similar, since both marks conveyed in part the same concept; whilst for other consumers, the marks could not be compared from a conceptual point of view.

In conclusion, the General Court found that the Board of Appeal had made a correct assessment of the similarity of the signs.

The General Court then assessed the likelihood of confusion. The court pointed out that, in this case, it had been held that the services concerned were partially identical and partially similar. It had also been held that the Board of Appeal had correctly found that the signs at issue were similar from an overall perspective.

In the circumstances of the present case, the General Court found that there was a likelihood of confusion between the signs at issue in respect of all the services concerned, and that such likelihood of confusion was not overcome by the high attentiveness of the relevant public.

The conclusion was not affected by Evonik’s assertion that, given the conditions under which the services covered are present in the market, the visual, phonetic and conceptual aspects of the signs at issue should not have been given the same weight in the overall assessment of the likelihood of confusion. Although it is true that one of those aspects may prevail over the others, Evonik had failed to substantiate its assertion with arguments or evidence showing how the services in question are offered or acquired. In any event, Evonik had failed to show how attaching the slightest importance to the phonetic aspect of the signs in question influenced the overall assessment of the likelihood of confusion.

Evonik also argued that the approach taken by the Board of Appeal amounted to granting excessive protection to marks bearing a low degree of distinctiveness. The Board of Appeal had found:

• first, that the word ‘impulso’ and the word ‘creador’ each had independent distinctiveness within the whole sign applied for;
• second, that the distinctiveness of those words was average; and,
• third, that the word ‘impulso’, because of its verbal nature and position, could be perceived as the dominant element of the signs at issue.

The General Court found that it could not be said that those findings amounted to granting excessive protection to the proprietor of the earlier mark.

As the sole plea put forward was unfounded, it was rejected and the action was dismissed in its entirety. Evonik was ordered to pay the costs.

Christian Kragelund and Allan Christensen, Gorrissen Federspiel, Aarhus