SNCF successfully opposes registration of ORIENTEXPRESSEN marks

In Møller v Trademark Appeal Board (Cases V-114-07 and V-115-07, February 27 2009), the Danish Maritime and Commercial Court has held that the trademarks ORIENTEXPRESSEN (and design) and ORIENTEXPRESSEN HAWAII WOK were confusingly similar to the Community trademark (CTM) ORIENT-EXPRESS.
On January 5 2000 the Société Nationale des Chemins de Fer Français (SNCF) registered the mark ORIENT-EXPRESS as a CTM for, among other things, services in Class 43 of the Nice Classification (with a priority date of April 1 1996). SNCF also owns the device marks ORIENT-EXPRESS and VENICE ORIENT EXPRESS, as well as the word mark VENICE ORIENT EXPRESS.
Agatha Christie Ltd owns the CTM MURDER ON THE ORIENT EXPRESS for goods and services in Classes 9, 16, 28 and 41. The mark VDB ORIENT-EXPRESS belongs to a third party.
On September 9 2004 an individual, A Møller, applied for the registration of the marks ORIENTEXPRESSEN (and falling star design)  and ORIENTEXPRESSEN HAWAII WOK for catering services in Class 43.
SNCF opposed both applications based on its CTM ORIENT-EXPRESS, which covers, among other services, hotel, hotel management and hotel reservation services.
In 2006 the Trademark Office upheld the oppositions on the grounds that:
  • the marks applied for were confusingly similar to the ORIENT-EXPRESS mark; and
  • the services protected by the CTM included those covered by the marks applied for.
In September 2007 the Trademark Appeal Board upheld the decision of the office.
Møller filed suit against the board and SNCF, arguing that:

  • the device mark ORIENTEXPRESSEN differed considerably from the CTM ORIENT-EXPRESS;
  • in a previous decision, the Trademark Office had held that the ORIENT-EXPRESS mark was not sufficiently distinctive to prevent the registration of the mark VENICE SIMPLON-ORIENT EXPRESS;
  • the ORIENT-EXPRESS mark lacked distinctiveness for services in Class 43; and 
  • hotel services and catering services are not similar, as the target consumers are different and these services are offered in a different way.
The Appeal Board and SNCF argued that the dominant element of Møller's device mark was the term 'orientexpressen'. The only difference between this term and SNCF's mark was the ending 'en' and the missing hyphen. The Appeal Board and SNCF also claimed that hotels usually provide catering services. Consequently, the services covered by the marks were similar, and there was a likelihood of confusion between Møller's device mark and SNCF's mark. 
The court agreed with the Appeal Board and SNCF, finding that the dominant element of Møller's device mark was the term 'orientexpressen', which was confusingly similar to the ORIENT-EXPRESS mark. The device element of the mark did not add a sufficient degree of originality.

Moreover, the court concluded that SNCF’s mark was not descriptive and that the services covered by the marks were similar, as hotels often offer catering services.

Consequently, the court dismissed Møller's action and upheld the oppositions.
Christian Levin Nielsen, Zacco, Copenhagen 

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