Practice change for device marks consisting of initials?

European Union

In García v Higson International Ltd (Case R 762/2008-4, October 3 2008), the Fourth Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) has issued an interesting decision in a dispute involving two trademarks consisting of initials.

EU practice and case law regularly highlights the fact that short trademarks (eg, abbreviations) have a limited degree of distinctiveness. Unless the trademark owner can successfully demonstrate that its mark has acquired distinctiveness, OHIM will usually consider that the mark is protected only against signs that are identical or almost identical.
In the present case, Manuel Ruiz García applied for the registration of the device mark NKS as a Community trademark. Higson International Ltd opposed the application based on its earlier device mark MKS. Both marks covered goods in Class 25 of the Nice Classification. The Opposition Division upheld the opposition on the grounds that the signs would be vocalized in a similar way.
The Fourth Board of Appeal of OHIM affirmed the Opposition Division’s decision, holding that:
  • the letters ‘N’ and ‘M’ would appear the same at a glance; and
  • the other letters (‘K’ and ‘S’) were identical.
The board also pointed out that:
 “when the letters ‘M’ and ‘N’ are used in purely aural communication, such as on the telephone, the international radiotelephony spelling alphabet is often required to make sure that the listener has identified the correct letter (ie, ‘M’ for ‘Mike’, ‘N’ for ‘November’).”
In addition, the board considered that the device element of the earlier mark was not eye-catching and made no memorable mental connection with the goods in question.
The board avoided mentioning a principle whereby short trademarks would enjoy only limited protection, and correctly ruled that the marks were similar from a phonetic and visual point of view.
This approach is in line with EU case law. For instance, on September 17 2008 the Court of First Instance held that the marks FVB and FVD were confusingly similar. The court considered that the letters ‘B’ and ‘D’ would be pronounced in the same way in the relevant territory (Germany).
However, in the present case the board went one step further, as it did not take into account the device element of the marks. Until now, OHIM had been reluctant to hold that two marks were similar where one letter was different and the marks included a device element. Therefore, the decision of the board might be regarded as a change in practice. This will need to be confirmed in other decisions.
Franck Soutoul and Jean-Philippe Bresson, Inlex IP Expertise, Paris

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