Vast reputation does not remove similarity requirement

European Union
In Lufthansa Airplus Servicekarten GmbH v Office for Harmonization in the Internal Market (OHIM) (Case T-321/07, March 3 2010), the General Court has upheld a decision of the Board of Appeal of OHIM in which the latter had found that there was no likelihood of confusion between the marks A+ and AIRPLUS INTERNATIONAL.
 
On November 13 2002 Applus Servicios Tecnológicos SL filed an application to register the mark A+ as a Community trademark (CTM) for goods and services in Classes 9, 35, 36, 40, 41 and 42 of the Nice Classification. The application was unsuccessfully opposed by Lufthansa Airplus Servicekarten GmbH on the basis of its earlier CTM AIRPLUS INTERNATIONAL, which covers goods and services in Classes 9, 35, 36, and 42. The opposition was rejected on the basis that there was no likelihood of confusion.
 
Lufthansa appealed, but the decision was upheld by the Board of Appeal of OHIM. Lufthansa filed a further appeal to the General Court.
 
Lufthansa argued that the Board of Appeal had disregarded:
  • the phonetic and conceptual similarities between the marks;
  • the identity of the goods and services; and
  • the enhanced degree of distinctiveness and the reputation of the AIRPLUS INTERNATIONAL mark.
The board had acknowledged that there were some phonetic similarities between ‘A plus’ and ‘airplus’, and conceptual similarities with regard to concept of the ‘plus’. Lufthansa claimed that a ‘mere’ phonetic similarity was sufficient to show a likelihood of confusion and that too much emphasis was placed by OHIM on the visual comparison of the marks.
 
However, the General Court found that the board had correctly held that the design and colours of the A+ mark were sufficient to distinguish it from AIRPLUS INTERNATIONAL. As a result, there was no likelihood of confusion.
 
In particular, the court agreed with the board’s findings that the visual differences between the marks outweighed the similarities, particularly given the fact that AIRPLUS INTERNATIONAL was a 20-letter mark, while the application was for a figurative mark composed of the single letter ‘A’ and the sign ‘+’. The marks shared only the letter ‘A’, which, in the application, was in a stylized form and in the colour yellow.  
 
The court further agreed that the phonetic differences between the marks were sufficient to conclude that the marks were dissimilar. In addition, the only conceptual similarity between the marks was the concept of ‘plus’, which had already been disregarded as being unable to be monopolized. It was found that the marks were so dissimilar that the opposition could not succeed, no matter what the size of Lufthansa's reputation.
 
Lufthansa also claimed that the board had abused its position in making certain assertions in the proceedings. However, the court found as follows:
  • An assessment of the goods and services was not necessary, as the lack of similarity between the marks was sufficient to rule out any likelihood of confusion.
  • Lufthansa’s arguments that ‘international’ was descriptive and the board’s finding that ‘plus’ could not be monopolized lowered the distinctiveness of the earlier mark.
  • The question of whether Applus’s observations should have been accepted was open for debate. However, OHIM exercised its discretion to grant an extension of time owing to a problem with the fax machine of Applus’s representatives.
  • Failure to notify Lufthansa of the change in ownership of the earlier mark had no bearing on the proceedings.
It is surprising that Lufthansa pursued these proceedings to the General Court given the weak merits of the case. Trademark proprietors need to be careful what statements are made on public record, as these could seriously undermine the distinctiveness of the mark they are relying on.
 
At its most basic, this decision should act as a reminder that, if marks are not similar, no amount of reputation will enable an opposition to be successful. While a large reputation can increase the chances of two marks being confused, the starting point must always be that the marks are similar - and here, they were not.
 
Natalie Clare and Mark Holah, Field Fisher Waterhouse LLP, London

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