REVERIE and REVERT are confusingly similar, says CFI

European Union
In Redcats SA v Office for Harmonization in the Internal Market (OHIM) (Case T-246/06, May 6 2008), the Court of First Instance (CFI) has affirmed a decision of the Board of Appeal of OHIM in which the latter had found that there was a likelihood of confusion between the mark REVERIE and the earlier registered trademark REVERT.
Redcats SA (France) applied for the registration of the word mark REVERIE as a Community trademark for goods in Classes 16, 20 and 24 of the Nice Classification. Manuel Revert & Cía SA (Spain) opposed the application based on its earlier registered trademark REVERT (and lion head design) for goods in Classes 24, 25 and 39. The Opposition Division of OHIM upheld the opposition in so far as it related to goods in Class 24. Redcats appealed to the Board of Appeal of OHIM.
As the goods covered by both marks were identical, the board focused its analysis on the similarity between the signs. The board found that the signs were similar from a visual and phonetic point of view in German and Spanish. Further, it held that the marks could not be compared from a conceptual point of view in German and Spanish because the marks had no meaning in these languages. Therefore, no conceptual differences could counteract the visual and phonetic similarities between the signs for consumers in Germany and Spain. Redcats appealed to the CFI.
The CFI agreed with the board’s finding that the signs were visually similar due to the similarities between the verbal elements 'revert' and 'reverie'. The CFI found that the first five letters of the mark applied for coincided with the first five letters of the earlier mark. It also considered that although the figurative element of the earlier mark could not be disregarded in the visual comparison of the signs, that element alone was insufficient to counterbalance the visual similarity between the verbal elements of the mark.
In addition, the CFI affirmed the board’s finding that the signs were phonetically similar in German and could not be compared conceptually in this country. The CFI held that since Redcats had not contested this finding in its original application to the CFI but raised this argument only during the hearing, it was inadmissible as it would widen the subject matter of the dispute. Such argument would have been admissible only if it had been based on a matter of law or fact that had come to light in the course of the procedure.
The CFI thus dismissed the appeal.
The decision demonstrates that when filing an appeal before the CFI, applicants must ensure that the original application details all the grounds of appeal, as new arguments may not be raised during the proceedings before the court.
Cristina Bercial-Chaumier, Bureau DA Casalonga & Josse, Alicante and Karina Dimidjian-Lecomte, Casalonga Avocats, Paris

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