‘Only’ marks not sufficiently similar for relevant public to make connection

European Union
In Aktieselskabet af 21 November 2001 v Office for Harmonisation in the Internal Market (OHIM) (Case T-586/10, November 21 2001), the General Court has found that OHIM was correct in rejecting an opposition filed by Aktieselskabet af 21 November 2001 against the registration of a figurative trademark by Parfums Givenchy SA under Articles 8(1)(b) and 8(5) of the Community Trademark Regulation (207/2009).
 
On August 10 2004 Givenchy filed an application for the registration of the following figurative sign as a Community trademark in Class 3 of the Nice Classification for "toilet soaps, perfumes, eau de Cologne and eau de toilette, cosmetics, make-up, essential oils for personal use, milks, lotions, creams, emulsions, gels for the face and body, deodorants for personal use":

 

On July 21 2005 Aktieselskabet filed an opposition based on:
  • the earlier Danish word mark ONLY, covering goods in Classes 3 (soaps, perfumery, essential oils, cosmetics, hair lotions; dentifrices) and 9 (spectacles, spectacle frames, anti-glare spectacles, sunglasses) (TM1);
  • the earlier Danish word mark ONLY, covering goods in Class 25 (clothing and footwear) (TM2); and
  • the earlier Community word mark ONLY, covering goods in Classes 14 (horological instruments), 18 (eg, leather and imitations of leather and goods made of these materials) and 25 (clothing, footwear and headgear) (TM3).
On October 22 2009 the Opposition Division of OHIM rejected the opposition. Although the goods were identical as regards TM1, there was no likelihood of confusion. TM2 and TM3 were identical to TM1, with the result that there could a fortiori be no likelihood of confusion since the goods in questions were different (see Article 8(1)(b) of the regulation). Even though the evidence submitted demonstrated that TM1 had a reputation in Denmark, Aktieselskabet had failed to show that use of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier marks (see Article 8(5)).
 
On December 17 2009 Aktieselskabet lodged an appeal, which was dismissed by the Second Board of Appeal of OHIM. The board began its analysis by examining TM1, and concluded that the relevant territory was Denmark and that the relevant consumer was the average consumer, deemed to be reasonably well-informed, observant and circumspect.
 
The signs were visually similar only to a low degree, since the adverb 'only' served the purpose of drawing attention to the element 'Givenchy' in the mark applied for, whereas the word 'only' had a more general function in TM1. As regards the phonetic comparison, there was a medium degree of aural similarity between the signs due to the fact that the additional element 'Givenchy' in the mark applied for would be pronounced. Conceptually, the element 'Only Givenchy' formed a logical and conceptual unit with a laudatory semantic value, distinct from the word 'only' considered in isolation, with the result that the signs at issue were partially similar.
 
Consequently, the board concluded that there was no likelihood of confusion between the signs at issue within the meaning of Article 8(1)(b), and this finding also applied to TM2 and TM3, even if the goods were, at most, similar. As regards Article 8(5), the board stated that the degree of similarity between the signs at issue was not sufficient for the public to establish a connection between the signs, since the element 'only' in the mark applied for would be perceived as inseparable from the element 'Givenchy', whereas it had an independent distinctive role in the earlier marks.
 
On December 22 2010 Aktieselskabet brought an action against the board's decision.

The General Court examined the likelihood of confusion between the mark applied for and TM1, and stated that the board was right to conclude that the goods in question were identical. As regards the marks, the General Court stated that a compound mark cannot be regarded as being similar to another mark which is identical or similar to one of the components of the compound mark, unless that component formed the dominant element within the overall impression created by the compound mark.
 
Visually, the General Court stated that TM1 consisted exclusively of the word 'only', whereas the mark applied for was a complex mark, composed of various word and figurative elements on a coloured background. The fact that TM1 and the mark applied for both contained the element 'only' was of little consequence, as the element 'Givenchy' in the mark applied for was the distinctive and dominant element, and was more eye-catching. Thus, the signs at issue were visually similar only to a low degree. As regards the aural and conceptual comparison, the General Court upheld the board's findings.
 
In view of the weak distinctive character of the word 'only', resulting from the fact that it is commonly used in the English language and is easily understood, even by the non-English-speaking public, the General Court found that the board was correct in finding that there was no likelihood of confusion (see Article 8(1)(b)).
 
Regarding TM2 and TM3, the General Court stated that there was no likelihood of confusion since - in contrast to the board's findings - the goods covered by the earlier marks were different from those covered by the mark applied for. After an overall assessment, the General Court found that there was no likelihood of confusion (see Article 8(1)(b)).
 
As regards the alleged infringement of Article 8(5), the General Court stated that the application of this provision is subject to the following cumulative conditions:
  • the marks at issue are identical;
  • the earlier mark cited in opposition has a reputation; and
  • there is a risk that the use without due cause of the trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trademark.
Moreover, the various infringements referred to in Article 8(5) are a consequence of a certain degree of similarity between the signs at issue by virtue of which the relevant section of the public makes a connection between those marks, even though it does not confuse them. The existence of such a link must be assessed globally, taking into account all factors relevant to the circumstances of the case. Factors that may be taken into account include:
  • the degree of similarity between the conflicting marks;
  • the nature of the goods or services for which the conflicting marks were registered;
  • the strength of the earlier mark's reputation;
  • the degree of the earlier mark's distinctive character; and
  • the existence of the likelihood of confusion on the part of the public.
Aktieselskabet had not claimed reputation, nor proved intensive use as regards TM1. Thus, the General Court stated that the board was correct in finding that the conditions for applying Article 8(5) were not present as regards TM2 and TM3, since they were not sufficiently similar to lead the relevant public to make a connection between them.
 
Accordingly, the General Court dismissed the action. 

Nina Ringen, Plesner, Copenhagen

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