Suffix and logo element of earlier mark considered secondary

European Union
In Aloys F Dornbracht GmbH & Co KG v Office for Harmonisation in the Internal Market (OHIM) (Case T-1/09, September 20 2011), the General Court has upheld OHIM’s refusal of a Community trademark (CTM) application for META by Aloys F Dornbracht GmbH & Co KG on the basis of earlier rights in the mark METAFORM, owned by Metaform Lucchese SpA.

In 2003 Dornbracht filed an application for META for sanitary ware, such as taps, in Classes 9, 11, 20 and 21 of the Nice Classification. On publication, Metaform opposed the application, in particular on the basis of a CTM registration for the following logo mark covering goods in Classes 6, 11, 20, 21 and 24:

As the registration was over five years old when the opposition was filed, Dornbracht requested Metaform to provide evidence of genuine use, but this request was rejected by OHIM’s Opposition Division because it had not been made within the term for Dornbracht’s initial observations. The Opposition Division then upheld the opposition on the basis of a likelihood of confusion between the marks, in particular on the part of the relevant UK public. On appeal by Dornbracht, the Fourth Board of Appeal of OHIM upheld the Opposition Division’s decision.

Dornbracht’s submissions to the General Court were essentially that there was no likelihood of confusion in view of the differences between the marks.

The court first considered the respective goods and agreed with the Board of Appeal that some were identical and others were similar. Turning then to the relevant public, it characterised it as comprising professionals in the construction sector and the general public, and thus concluded that it would include the average, reasonably informed consumer. 

In relation to the marks, the court agreed with the board that:
  • the essential element of the marks was 'meta', which made the marks visually similar despite the 'form' suffix and logo element of the earlier mark;
  • the marks were therefore phonetically highly similar; and
  • those UK consumers who understood the meaning of 'meta' would also consider the marks conceptually similar. 
Unsurprisingly, the court concluded that there was a likelihood of confusion between the marks and rejected the appeal, awarding costs against Dornbracht.

A practical point arising from this decision is to ensure that any request for proof of use of marks on which an opposition is based which are over five years old should be made within the applicant’s first term for filing observations. On a more general level, it is interesting to note that both the suffix and the logo element of the earlier mark were in this case considered secondary to the 'meta' element, which was fatal to the applicant’s appeal.

Chris McLeod, Squire Sanders & Dempsey (UK) LLP, London

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