The fact that later sign contains earlier mark in its entirety is indication of similarity

In Infocit - Prestação de Serviços, Comércio Geral e Indústria Lda v Office for Harmonisation in the Internal Market (OHIM) (Case T-621/14, June 24 2015), the General Court has confirmed a decision of the Second Board of Appeal of OHIM in opposition proceedings involving the marks DIN and DINKOOL.

In December 2011 Infocit filed a Community trademark application for DINKOOL, claiming protection for various goods in Classes 1, 2, 3, 6, 7, 12, 16, 20 and 21 of the Nice Classification.

After the publication of the application, DIN-Deutsches Institut for Normung eV filed an opposition based on:

• an international registration for the stylised mark DIN, which also covered Germany for goods in Classes 1 to 34; and
• the non-registered sign DIN, used in Germany for the development of norms, standards and technical rules as a service to industry, the state and society as a whole.

The Opposition Division of OHIM rejected the opposition. However, the Second Board of Appeal upheld DIN’s appeal and came to the conclusion that a likelihood of confusion existed. In particular, it found that the goods were partly identical and partly similar, and that the signs were visually similar and had a certain degree of phonetic similarity, but were conceptually different.

Infocit appealed to the General Court.

The court first examined two procedural aspects:

• Infocit questioned the genuine use of DIN for the first time before the General Court. The court clearly pointed out that this argument should have been raised much earlier and that it can only review the lawfulness of the decisions of the Board of Appeal. As Infocit had not previously questioned the genuine use of DIN, neither the Opposition Division nor the board of appeal had dealt with this question and the argument was rejected as inadmissible.

• Infocit alleged a breach of Article 8(4) of the Community Trademark Regulation (207/2009) without giving any further reasons. The General Court stated that the Board of Appeal had relied only on Article 8(1)(b) and had not even considered the further ground on which the opposition was based (unregistered rights under Article 8(4)), so there was no room for a review by the General Court. Hence, this argument was also inadmissible.

The General Court then turned to Infocit’s argument that the board had infringed Article 8(1)(b). The court agreed with the board that Germany was the relevant territory and that the general public, as well as professionals with a higher level of attention, should be taken into account. In view of the technical nature of some of the goods in Classes 1, 2, 7 and 12, the General Court agreed with the board's assessment that the attention of the public would be somewhat higher than normal with respect to these goods. It was also undisputed that the goods were either identical or similar.

The General Court then compared the signs in question and reiterated some generally acknowledged guidelines. It also pointed out that the fact that the later sign consisted exclusively of the earlier trademark to which another word had been added was an indication that the two marks are similar. Therefore, in cases where the earlier trademark is contained in the later mark, there is a good chance that the marks are similar.

Infocit argued that the marks were visually different because of the different number of syllables and letters. The General Court agreed that there were some dissimilarities from a visual point of view, but found that they were not striking. In view of the identity of the term 'DIN', which was furthermore placed at the beginning of the later mark DINKOOL, the General Court agreed with the Board of Appeal that there was a certain degree of visual similarity between the signs.

Contrary to what Infocit claimed, the General Court also agreed with the board that there was a limited degree of phonetic similarity between DIN and DINKOOL, although it conceded that the different number of syllables and letters led to a slight difference in rhythm and intonation.

With respect to the conceptual similarity, the General Court came to the conclusion that there was some conceptual similarity for those German consumers who know the meaning of the word 'DIN' ('Deutsche Industrie Norm') and thus associate 'DIN' with the activities of the opponent, whereas 'KOOL' would be perceived as a misspelling of the English word 'cool', which is understood by that part of the German public. Those consumers would consider 'DIN' and 'DINKOOL' to be conceptually similar, while others, who would refer to the meaning of 'cool' in the English language, would not perceive these conceptual similarities.

The General Court then turned to the global assessment of the likelihood of confusion and found that the Board of Appeal was correct in holding that a likelihood of confusion existed between DIN and DINKOOL in view of the identity and similarity of the goods, and the visual, phonetic and conceptual similarity between the signs. The General Court thus dismissed Infocit’s action in its entirety.

This decision is not a real surprise. However, there are two lessons to be learnt:

• If genuine use is questioned, this should be done as early as possible. Infocit's argument that the opponent does not market any goods, but at most certifies them, and that the mark had thus not been put to genuine use for goods in Classes 1 to 34, could have been an interesting argument resulting in a completely different result if genuine use had been questioned before the Opposition Division.

• The General Court maintained its position that trademarks will likely be found to be similar if the earlier mark is entirely contained in the later sign, especially if the earlier mark appears at the beginning, to which consumers generally pay greater attention.

Carsten Albrecht, Fritze Wicke Seelig, Hamburg