Vimeo fails to demonstrate peaceful co-existence of VIMEO and MEO marks
In Vimeo LLC v Office for Harmonisation in the Internal Market (OHIM) (Case T-96/14), the General Court has upheld a ruling of the Second Board of Appeal of OHIM in which the latter had rejected the application for VIMEO, considering that there was a likelihood of confusion with the figurative mark MEO.
Applicant Vimeo LLC filed an application for registration of the word mark VIMEO as a Community trademark (CTM) for goods and services in Classes 38, 41 and 42 of the Nice Classification. On August 24 2011 PT Comunicacões SA filed an opposition against the registration of the mark under Article 41 of the Community Trademark Regulation (207/2009). The opposition was based on earlier marks, including the Community figurative mark MEO in Classes 9, 16, 35, 37, 38, 41 and 42:
It was common ground throughout the proceedings that the services at issue were identical or similar. The Opposition Division of OHIM upheld the opposition in its entirety. Vimeo appealed, and provided new materials to supplement the evidence - namely, evidence of the co-existence of numerous MEO-formative marks.
The Second Board of Appeal of OHIM dismissed the applicant’s appeal on account of a likelihood of confusion, within the meaning of Article 8(1)(b) of the regulation, between the mark applied for and the earlier CTM reproduced above. The board found that the evidence showing numerous third-party marks containing the element 'MEO' was insufficient to show that a likelihood of confusion between the marks at issue was reduced or eliminated.
Vimeo appealed to the General Court (Fourth Chamber), raising four pleas in law.
Vimeo first claimed that the Board of Appeal had taken into account rights upon which the opponent had not based its opposition, in that it had considered the opponent’s mark to be a word mark, not a figurative mark. The court rejected the claim, holding that the Board of Appeal had stated that the opponent’s mark had verbal properties.
Vimeo also claimed that the Board of Appeal had failed to fully take into account the evidence adduced to show “the peaceful co-existence” on the market of the marks at issue. Such evidence included a witness statement by Vimeo’s president that Vimeo had operated an online video platform in Europe since at least 2005 without having been informed of a single case of confusion between the marks at issue. Furthermore, according to the applicant, it was clear that the opponent had used the mark in the field of telecommunications and television broadcasting since at least 2006. Vimeo argued that the opponent had not challenged that evidence and the Board of Appeal had not given any particular reason to doubt its accuracy.
However, the court found that, while Vimeo had established use of the VIMEO mark in the European Union before the lodging of the application for registration, this was not sufficient to demonstrate the peaceful co-existence of the marks at issue. Accordingly, the court found that the peaceful co-existence of the marks had not been established sufficiently for it to be taken into account in the global assessment of the risk of confusion between the marks at issue.
The court thereafter made the requisite global assessment of the likelihood of confusion and upheld the Board of Appeal's findings, stating that while the beginning of the mark is often the most important element, the opponent’s mark was contained entirely in the applicant’s mark and there were no conceptual differences to outweigh the visual and aural similarities.
Accordingly, the court dismissed the appeal.
This case is interesting in that it confirms that OHIM gives 'word mark' protection to figurative marks. It also confirms that OHIM is opponent-friendly, placing very strict evidentiary demands on applicants who claim that the marks at issue co-exist peacefully on the market.
Peter Gustav Olson, NJORD Law Firm, Copenhagen
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