Honda Motor Europe Ltd
filed an application for the registration of the word mark MAGIC SEAT as a Community trademark for "vehicle seats and vehicle seat mechanisms, and parts and fittings and accessories for these goods".
lodged an opposition based on its earlier trademark SEAT (and design), which is registered in Spain for the following goods:
"land vehicles, coupling and transmission components as well as other components and spare parts for land vehicles not belonging to other classes; apparatus for locomotion by land, air or water."
In support of its opposition, Seat argued that:
- there was a likelihood of confusion between the marks; and
- the trademark SEAT was well known, particularly in Spain.
The Opposition Division of OHIM upheld the opposition on the grounds that there was a likelihood of confusion between MAGIC SEAT and SEAT due to the identity of the goods and the similarity of the marks. In light of that finding, it was not necessary to examine the enhanced distinctive character of the SEAT mark.
Honda appealed, emphasizing, among other things, that the purchasers of vehicle seats were sophisticated consumers. However, the First Board of Appeal dismissed the appeal in its entirety on the following grounds:
- the goods covered by both marks were identical;
- Seat's mark had a high distinctive character in Spain on account of its reputation; and
- even if consumers did not confuse the two marks and noticed the differences between them, there was a risk that consumers might associate the marks and assume that they had a common commercial origin.
Honda appealed to the CFI.
First, the CFI held that the relevant public was composed:
“on the one hand, of second-hand car dealers, garage owners and mechanics and, on the other hand, of average consumers, who will probably be assisted by a mechanic or other skilled professional when changing or repairing anything related to a vehicle seat.”
This definition was not disputed by Honda. The CFI also held that there was identity of goods, which was not disputed by Honda either.
Finally, the CFI held that the dominant element of Seat's figurative mark was the word 'Seat', which was also present in the mark applied for. According to the CFI, the relevant Spanish consumers might not perceive the term 'seat' in the compound mark MAGIC SEAT as an English word. Rather, there was risk that 'seat' might be pronounced as the Spanish two-syllable word ('se-at'), rather than the monosyllabic English word. The CFI further held that the term 'magic'', or its Spanish equivalent 'màgico', would be perceived as “purely laudatory”. The CFI concluded that the relevant public was likely to believe that the goods in question came from the same undertaking or from economically linked undertakings. Therefore, the board of appeal had not erred in finding that there was a likelihood of confusion and association. The appeal was thus dismissed.
This case shows that the trademark SEAT for cars may be protected for car seats in Class 12 under certain circumstances. The decision is in line with current EU practice, under which a purely descriptive English word may enjoy trademark protection in Spain (see, eg, "'Donuts' not generic in Spain, rules Court of First Instance
Peter Gustav Olson, MAQS Law Firm, Copenhagen