Tennis mark opposition called 'out' by CFI

European Union
In Professional Tennis Registry Inc v Office for Harmonization in the Internal Market (OHIM) (Case T-168/07, March 4 2009), the Court of First Instance (CFI) has held that the marks PTR PROFESSIONAL TENNIS REGISTRY and RPT REGISTRO PROFESIONAL DE TENIS were dissimilar.
On August 15 2001 Professional Tennis Registry Inc applied for the registration of PTR PROFESSIONAL TENNIS REGISTRY (and design) as a Community trademark for goods and services in Classes 16, 25 and 41 of the Nice Classification. On August 5 2003 Registro Profesional de Tenis STL filed a notice of opposition based on the Community and Spanish trademarks RPT REGISTRO PROFESIONAL DE TENIS (and design) for goods and services in Classes 25 and 41.
On June 29 2005 the Opposition Division of OHIM held that there was no likelihood of confusion between the marks. However, on February 28 2007 the First Board of Appeal of OHIM ruled that there was an average degree of visual and phonetic similarity between the marks which could give rise to confusion on the part of the relevant public. Professional Tennis Registry appealed to the CFI, which annulled the decision of the Board of Appeal.
The CFI first examined the visual similarity of the marks. It found that the marks were similarly structured, with a figurative element placed in the upper part, the acronym at the centre and the expression containing the words from which the acronym was formed at the bottom. However, the CFI found that the size, position and form of the figurative elements, as well as the size, stylization and specific order of the letters of the acronyms and the words making up the verbal elements of the marks were different.
From a phonetic point of view, the CFI stated that even though the acronyms were composed of the same letters, they were pronounced differently. The CFI considered that the inclusion of the phrases 'Profesional Tennis Registry' and 'Registro Profesional de Tenis' had no effect on the likelihood of confusion. The CFI pointed out that the average consumer would refer to the marks exclusively by the acronyms 'PTR' or 'RPT', as these served as abbreviations for the expressions 'Profesional Tennis Registry' and 'Registro Profesional de Tenis'. The CFI went further, holding that even on the assumption that those expressions were pronounced, the words that they contained were placed in a different order and would thus be pronounced differently. 
Under the case law of OHIM, trademarks composed of initials or acronyms are usually held to have a limited level of distinctiveness which affords protection only against identical or almost identical signs. In this respect, the CFI was arguably correct in finding that the acronyms PTR and RPT were dissimilar. However, the CFI should not have disregarded the expressions 'Profesional Tennis Registry' and 'Registro Profesional de Tenis', as these could have given rise to a higher degree a similarity between the marks.
Following the decision, applicants might think twice about including the words corresponding to the acronyms for which protection is sought in a bid to differentiate their marks from earlier registered trademarks. This may prove to be pointless if the approach taken by the CFI in this case is to be confirmed.
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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