Relevant public will note difference between first letters of marks

In Oracle America Inc v Office for Harmonisation in the Internal Market (OHIM) (Case T-554/12, March 27 2014), the General Court has carried out a rather interesting analysis of the similarity between the trademarks AAVA and JAVA. The decision was given in answer to an appeal by Oracle America Inc in opposition proceedings against the Community trademark AAVA MOBILE.

The word mark AAVA MOBILE was applied for by Finnish organisation Aava Mobile Oy. The applicant company operates in the field of mobile platform and product development, and is the largest original design manufacturer in Europe for mobile devices. The company applied for trademark protection for its sign in Classes 9, 38 and 42 of the Nice Classification.

Computer technology giant Oracle filed a notice of opposition with OHIM. Oracle argued that the mark AAVA MOBILE was liable to be confused with its prior registered trademark JAVA. The opposition was further based on Article 8(5) of the Community Trademark Regulation (207/2009), which concerns the protection granted to trademarks with a reputation.

Oracle was out of luck in the first two instances, namely the Opposition Division and the Board of Appeal of OHIM. Neither body accepted Oracle’s argument that there was a likelihood of confusion between the marks. In fact, the Opposition Division went as far as to discredit the reputation of the JAVA mark.

Oracle filed an appeal to the General Court. Unfortunately for Oracle, the court also lacked sympathy for the company’s arguments.

In its decision, the court adopted the standard reasoning for the assessment of similarity between two trademarks, starting with the analysis of the relevant public, then turning to the comparison of the signs and ending with an overall assessment.

The General Court made the following key conclusions:

• The Board of Appeal had rightly assessed AAVA MOBILE as a whole, while attaching greater importance to the word ‘aava’ than the word ‘mobile’, which, however, cannot be entirely disregarded.
• Visually, the resemblances which resulted from the presence of the common letters ‘ava’ were completely offset by the significant differences between the signs. The relevant public would note the difference between the first letters of the signs - namely, the letter ‘A’ in respect of the mark applied for and the letter ‘J’ in respect of the earlier mark.
• The marks were phonetically dissimilar. The phonetic resemblances between the marks were completely offset by the significant differences between the signs. The letters ‘J’ and ‘A’, at the beginning of the first syllable of the word elements of the marks, are pronounced differently, irrespective of the EU language used.
• Conceptually, the marks were also dissimilar. The mark applied for would evoke, for the Finnish-speaking part of the relevant public, the words ‘open’, ‘expansive’ or ‘wide’, as well as telecommunications and mobile device hardware or services; for the non-Finnish-speaking part of the relevant public, the mark applied for would evoke only the latter services and hardware. Moreover, the earlier mark, in all EU languages, would refer to the island of Java.
• Since there was no visual, phonetic or conceptual similarity between the signs, the circumstances of the present case bore no relation to Matratzen Concord v OHIM (Case T-6/01) and Volvo Trademark Holding AB v OHIM (Case T-434/07).
• All things considered, the mark AAVA MOBILE was sufficiently dissimilar to Oracle’s JAVA. In those circumstances, the condition that the marks at issue be identical or similar had not been met.

It will be interesting to see whether Oracle initiates a final round of appeal before the Court of Justice of the European Union.

Jukka Palm, Berggren Oy Ab, Helsinki