Relevant public will attach little significance to meaning of descriptive words

European Union
In CM Capital Markets Holding SA v Office for Harmonization in the Internal Market (OHIM) (Cases T-490/08 and T-563/08, June 22 2010), the General Court has upheld decisions of the Board of Appeal of OHIM in which the latter had rejected oppositions to the registration of two marks including the words 'carbon capital markets'.
 
CM Capital Markets Holding SA is the owner of a figurative trademark including the words 'capital markets', which is registered as a Community and Spanish service mark for, among other things, services in Class 36 of the Nice Classification. The mark also includes a graphic element consisting of a rectangular frame onto which the capital letter 'C' and a wavy line are superimposed. Based on these registrations, CM Capital Markets filed an opposition against the registration by Carbon Capital Markets of:
  • a figurative mark including the words 'carbon capital markets' and two interlocking rings; and
  • the word mark CARBON CAPITAL MARKETS. 
The services in respect of which registration was sought also fell within Class 36. The Opposition Division of OHIM rejected the opposition and the Board of Appeal affirmed. CM Capital Markets appealed.

The only elements that are common to the marks are the words 'capital' and 'markets'. CM Capital Markets argued that the relevant public would perceive the capital 'C' in its mark as a reference to carbon, especially as it provides services in connection with the carbon dioxide markets. The court rejected this argument and confirmed OHIM's finding that, based on a global assessment:
  • the marks were not visually similar;
  • there was only some phonetic similarity between them; and
  • they were not conceptually similar
It is true that, where two marks contain similar descriptive elements, the public can easily attach the same meaning to the marks. However, the court pointed out that this was not the correct test. The court explained that, although descriptive marks must be assessed globally, it must take into consideration the extent to which the relevant public will attach significance to the meaning of the descriptive words in identifying the commercial origin of the services at issue. In the present case, the court held that the relevant public, which consists of consumers who are very attentive, well informed and familiar with basic English financial terminology, would attach little significance to the meaning of the words ‘capital’ and ‘markets’, since they are descriptive of the services for which the marks are registered.

Further, according to the court, it was important to note not only that there is a very large number of words that begin with the letter ‘C’, but also that the relevant public is more likely to perceive that letter as referring to the word ‘capital’ than to the word ‘carbon’. That finding was corroborated by the fact that, assuming that the wavy line in CM Capital Markets' mark is perceived as a fanciful letter ‘M’, the letters ‘C’ and ‘M’ are likely to be perceived as the initial letters of the identically coloured words ‘capital’ and ‘markets’, respectively - or, as pointed out by OHIM, as the initials of CM Capital Markets' company name.

The General Court thus dismisses the appeal.

Paul Steinhauser, Arnold + Siedsma, Amsterdam

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