Surprising conclusions reached in Promat Case

European Union
In Promat GmbH v Office for Harmonization in the Internal Market (OHIM) (Case T-71/08, July 8 2009), the Court of First Instance (CFI) has upheld a decision of the Board of Appeal of OHIM in which the latter had dismissed an opposition against the registration of the mark PROSIMA.
In October 2001 Spanish company Prosima Comercial SA (Spain) filed an application for the registration of the mark PROSIMA (and design) for, among other goods and services, “stuffing of rubber or plastic and insulating material” in Class 17 of the Nice Classification. German company Promat GmbH opposed the application based on its German registration for the trademark PROMINA for “fire protection panels and insulating panels of a mineral nature” in Class 17. The opposition was directed only against the goods in Class 17.
Without comparing the goods, the Opposition Division of OHIM rejected the opposition on the grounds that there was no likelihood of confusion between PROSIMA and PROMINA. However, the Board of Appeal found that because the marks were similar from a phonetic and visual point of view, the Opposition Division should have carried out a comparison of the goods. The case went back to the Opposition Division, which again rejected the opposition, holding that the goods were not similar. This second decision was upheld by the Board of Appeal. Promat appealed to the CFI.
The CFI first held that the relevant public consisted of German-speaking professionals.
With regard to the similarity of the goods, the CFI stated that it should take all relevant factors into account, including:

  • the nature of the goods;
  • their purpose and use;
  • their characteristics;
  • their channels of distribution; and
  • whether they were in competition with each other or could substitute each other.
The CFI also pointed out that goods and services are classified for administrative purposes only. Therefore, the fact that the goods covered by both marks fell within Class 17 did not necessarily mean that they were similar.
The CFI went on to compare “stuffing of rubber or plastic and insulating material” and “fire protection panels and insulating panels of a mineral nature”. According to the CFI, the goods covered by the mark applied for are used for packaging purposes only - they are used to fill boxes or containers to protect their content against breakage or adverse environmental conditions, but not against heat or fire. This was mere speculation, as there was no such limitation in the specification of the goods. The CFI also referred to the Spanish version of the specification, which, allegedly, was narrower and referred to “packing and insulating material”. The CFI stated that packing material was flammable, whereas "fire protection panels and insulating panels" aimed to protect against fire. The CFI further held that the goods covered by the earlier mark are used in industrial ovens and machines operated by combustion power.

The CFI thus concluded that the purpose of the goods was different. The CFI also stated that the goods were sold through different channels of distribution: the goods covered by the earlier mark were sold mainly in DIY shops, while the goods covered by the mark applied for were unlikely to be found in such shops. The CFI further held that the word 'insulating', which was common to the specification of the goods for both marks, is a broad term which can have different meanings. Therefore, the CFI concluded that the Board of Appeal had been correct in finding that the goods were different.
Although the CFI might arguably have reached the right conclusion, its reasoning is surprising. It seems that both the board and the CFI based their decision on mere speculation about the goods covered by the marks. Oppositions are formal proceedings and goods should be compared based on the wording of the specification. In the present case, the board and the CFI examined in great detail how the goods would be used. However, such considerations are irrelevant in opposition proceedings and should be reserved for infringement proceedings. The decision thus contains various mistakes and, arguably, should not be used as guidance in future cases.

Carsten Albrecht, FPS Rechtsanwälte & Notare, Hamburg

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