Rule that consumers normally attach more importance to first part of words cannot apply in every case

In Cristiano di Thiene SpA v Office for Harmonisation in the Internal Market (OHIM) (Case T-193/14, September 23 2015), the General Court has held:

“In general terms, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects... Furthermore, it should be noted that the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trademarks are similar.”

The case involved Cristiano di Thiene SpA (as applicant), OHIM (as defendant) and Nautica Apparel Inc (as intervener). The dispute arose from an application for registration as a Community trademark (CTM), filed on January 8 2009, for the word sign AERONAUTICA.

The goods and services in respect of which registration was sought fell within Classes 9 (including spectacles), 18 (including leather and imitations of leather, animal skins), 20 (including furniture, mirrors, picture frames), 25 (clothing, footwear, headgear), 35 (including advertising and business management), 42 (including organisation and management of franchising activities) and 43 (providing of food and drink; temporary accommodation) of the Nice Classification.

On December 22 2010 Nautica Apparel filed a notice of opposition pursuant to Article 41 of the Community Trademark Regulation (207/2009) based on the following prior word marks:

• the CTM NAUTICA, registered under No 5 177 399 on April 23 2007 in Classes 8 and 35;
• the CTM NAUTICA, registered under No 7 081 391 on October 9 2008 in Classes 9, 25 and 35; and
• the CTM NAUTICA BLUE, registered under No 2 921 203 on September 16 2004 in Classes 9, 18, 20 and 25.

The opposition - based on Article 8(1)(b) of the regulation (likelihood of confusion between the signs at issue) - was partially upheld on November 28 2012 by the Opposition Division for Classes 9, 18, 20, 25, 35 and 42.

On January 11 2013 the applicant filed an appeal with OHIM, under Articles 58 to 64 of the regulation. By decision of January 10 2014, the Fourth Board of Appeal of OHIM dismissed the appeal, holding that:

“there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 207/2009 in view of the identity or similarity of the goods and services covered by the signs, the average degree of visual and phonetic similarity between the signs, and the normal distinctive character of the earlier trademarks.”

The applicant appealed before the General Court, alleging infringement of Article 8(1)(b) of the regulation and raising the following main complaints:

1. The Board of Appeal had given insufficient priority to the fact that only the contested trademark contained the prefix 'aero'; and
2. The board had wrongly held that the element 'nautica' is of average distinctive character, even though that term is inherently weak.

With regard to the first complaint, the applicant claimed that the Board of Appeal had not given sufficient importance to the role of the element 'aero' at the beginning of the contested sign and, therefore, had not correctly applied the rule that "consumers normally attach greater importance to the first part of the word or words constituting a word mark”.

The court dismissed the first complaint, arguing that this rule is not valid in every case. The difference created by the element 'aero' was not relevant here due to the length of the common element 'nautica' and the significant position occupied by that element in the signs: it was 'nautica' that influenced the overall visual impression given to consumers, not 'aero'.

Moreover, even if a common element has an independent distinctive role in the composite sign, the public – in light of the goods and services covered by the signs – may still believe that the goods or services at issue derive, at the very least, from economically linked companies, in which case the likelihood of confusion must be held to be established.

Consequently, the first complaint was rejected.

With regard to the second complaint, the applicant argued that the word 'nautica' had a weak distinctive character and led consumers to associate the goods and services covered by that mark with the maritime world.

The General Court held that, even if an objection relating to the weak distinctive character of the earlier mark could be acceptable, this was only one factor among others involved in the assessment of the likelihood of confusion. Such objection, on its own, could not be sufficient to prevent a finding of likelihood of confusion (no case law has ever implied that it would be the case): instead, there may be a likelihood of confusion due to the similarity of the goods or services covered by the signs.

With regard to the conceptual comparison, Spanish, French, Portuguese and English-speaking consumers conceived the terms 'nautica' and 'aeronautica' as being linked to goods and services relating to nautical and aerial navigation techniques and, possibly, to economically linked companies. For those consumers who do not understand the meaning of these words, the conceptual comparison of the signs remained neutral.

In light of the above, the General Court held that the Board of Appeal had not erred in finding that there was a likelihood of confusion between the marks, especially due to the identity or similarity of the goods and services covered by the signs.

Margherita Barié and Pietro Pouché, Carnelutti Studio Legale Associato, Milan