Opposition to STENINGE SLOTT mark crumbles

In Hammarplast AB v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has dismissed Hammarplast AB's opposition against the registration of the Community trademark STENINGE SLOTT.

Hammarplast, which is the holder of the national Swedish trademark STENINGE KERAMIK, filed an opposition against the registration of the Community trademark STENINGE SLOTT. The common element 'Steninge' is a geographical name in Sweden and the word 'keramik' in Hammarplast's mark means 'ceramic', while the word 'slott' in the STENINGE SLOTT sign means 'castle' or 'palace'. Hammarplast argued that the marks were confusingly similar and both covered similar goods (ie, ceramic flowerpots on the one hand and design products made of glass and crystal on the other).

The CFI upheld the OHIM Board of Appeal's earlier decision to reject Hammarplast's opposition.

First, the court assessed the degree of similarity between the goods in question and agreed with the Board of Appeal's prior assessment that there was only a low degree of similarity.

When proceeding to assess the similarity of the marks in conflict, the CFI reiterated that:

• the appreciation of the likelihood of confusion must be global and include visual, oral and conceptual aspects;
  
  
• it is the overall impression that is decisive; and
  
  
• the distinctive and dominant components of the marks are to be considered.

The court then went on to note that the marks shared the common element 'Steninge', but also stated that this common word refers to a geographical location in Sweden. It rejected Hammarplast's argument that the national Swedish Trademarks Registry, when registering its trademark, must have recognized the distinctive character of the word 'Steninge' since the 'keramik' element is exclusively descriptive. The CFI stated that prior registrations in member states are without decisive weight for the purpose of registering a Community trademark.

The CFI further held that the two elements making up the marks in conflict, given their character, must be linked to one another in order to have any significance and that, therefore, both marks must be assessed having regard to their whole meaning, rather than on the basis of their common element 'Steninge'.

Based on the evidence of record, the CFI held that it appeared that Steninge palace had played a role in Swedish history, conferring on it genuine notoriety among the Swedish public. The court, therefore, upheld the Board of Appeal's assessment that, for the average Swedish consumer, the mark STENINGE SLOTT refers to a well-known historical palace. The CFI also noted that the Board of Appeal was at liberty to surmise what perception the relevant public will have of the mark even in the absence of scientifically demonstrable evidence.

In conclusion, the court held that from a conceptual point of view the words 'Steninge slott' have quite a particular significance whereas the words 'Steninge keramik' have no real significance; the proposed Community trademark will be recognized as referring to Steninge palace whereas the STENINGE KERAMIK mark will be recognized as evoking ceramics linked to Steninge only. The CFI, therefore, held that the conceptual differences produced a real dissimilarity, which far outweighed any visual or phonetic similarities.

Peter Skoglund, Advokatfirman Delphi & Co, Stockholm