QUANTUM application amounts to nothing

In TIME Art Uluslararasi Saat Ticareti ve dis Ticaret AS v Office for Harmonization in the Internal Market (OHIM), the European Court of Justice (ECJ) has upheld an opposition filed against the figurative mark QUANTUM on the basis of the earlier national trademark QUANTIÈME.

TIME Art Uluslararasi Saat Ticareti ve dis Ticaret AS applied to register QUANTUM in relation to watches, clocks and other goods falling within Class 14 of the Nice Classification. Devinlec Développement Innovation Leclerc SA filed an opposition on the basis of its French registration for the mark QUANTIÈME for goods in Classes 14 and 18. The OHIM Opposition Division upheld the opposition, holding, among other things, that the goods covered by the opposing marks were in part identical and in part similar, and that the signs presented a sufficient degree of visual, phonetic and conceptual similarity to create a likelihood of confusion on the part of the relevant public. The OHIM Board of Appeal upheld TIME Art's appeal and dismissed the opposition. On further appeal, the European Court of First Instance (CFI) decided in Devinlec's favour (see Court of First Instance has no time for QUANTUM mark). The ECJ has now dismissed TIME Art's appeal for the following reasons:

• TIME Art claimed that the distinctiveness of the earlier national mark constitutes an essential element of the assessment of the likelihood of confusion, which the CFI failed to consider appropriate. As the opposing trademark is merely descriptive, TIME Art contended, small differences in the subsequent mark would be sufficient to prevent a likelihood of confusion. The ECJ rejected this argument. It made clear that the existence of likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case pursuant to SABEL, Lloyd Schuhfabrik Meyer and Matratzen. The court also held that it would be wrong to treat the single fact that the earlier national mark is only of weak distinctive character as being of overriding importance, as this would lead to a conclusion that a likelihood of confusion exists only where the mark applied for is identical to the prior mark. This would not be consistent with the global appreciation of the marks that the competent authorities are required to undertake under Article 8(1)(b) of the Community Trademark Regulation.
  
  
• TIME Art claimed that the conceptual differences between the marks would be of primary importance and would trump any likelihood of confusion. Again, the ECJ highlighted that all factors relevant to the circumstances of the case have to be taken into account. It ruled that the CFI was entitled to consider that in order for the conceptual differences between the opposing marks to be able to counteract the similarities existing between them, it would be necessary that at least one of the marks in question had, from the point of view of the relevant public, a clear and specific meaning. The public has to be capable of grasping this meaning immediately.
  
  
• TIME Art claimed that the CFI's decision was based on contradictory reasoning. The ECJ held that the CFI was fully entitled to hold that since the particular circumstances in which the goods in question were marketed may vary and depended on the wishes of the proprietors of the opposing marks, it is inappropriate to take those circumstances into account in the prospective analysis of the likelihood of confusion between those marks.

Philipe Kutschke, Bardehle Pagenberg Dost Altenburg Geissler, Munich