Visual aspect of marks for clothing must be given greater weight

In Rocket Dog Brands LLC v Office for Harmonisation in the Internal Market (OHIM) (Case T-338/12, June 18 2013), the General Court (Seventh Chamber) has found that the similarity between the goods and the high phonetic similarity between the marks were outweighed by the conceptual dissimilarity and the low degree of visual similarity of the marks.

On February 16 2009 Julius K9 bt obtained a registration for the figurative Community trademark K9PRODUCTS (CTM No 5966031) pursuant to the Community Trademark Regulation (40/94) (now the Community Trademark Regulation (207/2009)):

The goods for which the trademark was registered fell within Classes 18 and 25 of the Nice Classification.

On July 9 2010 Rocket Dog Brands LLC filed an application for a declaration that the trademark was invalid under Article 8(1)(b) and Article 53(1)(a) of Regulation 207/2009. The application was based on the earlier figurative Community trademark No 3933256, registered on December 10 2005 for goods in Class 25, which contained a stylised dog and the sign 'K9':

By its decision of September 24 2010, the Cancellation Division upheld the application for a declaration of invalidity of the contested mark in relation to all the goods in Class 25 and certain goods in Class 18 ("goods made of leather and its imitations; briefcases; wallets; purses; purses not of precious metal; chain mesh purses, not of precious metal").

The Cancellation Division rejected the application regarding the goods in Class 18. Furthermore, it found that:

• the goods covered by the contested mark were identical or similar to those covered by the earlier mark;
• the marks were visually similar to a low degree;
• the marks were phonetically similar to a medium degree and conceptually dissimilar; and
• the distinctive character of the earlier trademark was average.

Moreover, the Cancellation Division found that:

• the word 'products' in the contested trademark would be understood as a reference to the items sold and it was therefore not distinctive; and
• notwithstanding the presence of the stylised dog, both marks contained the combination 'K9', which was dominant in the contested trademark.

In light of the above, it concluded that there existed a likelihood of confusion with regard to the goods that were identical or similar.

On September 23 2011 Julius-K9 filed a notice of appeal against the decision of the Cancellation Division. By a decision of May 21 2012, the Fourth Board of Appeal annulled the decision of the Cancellation Division and dismissed the application for a declaration of invalidity in its entirety.

The Board of Appeal considered that the goods included in Class 25 covered by the contested trademark and the earlier mark were partly identical and partly similar. Second, as regards the comparison of the signs, the Board of Appeal found that the stylised dog constituted the dominant and distinctive element of the earlier mark and that the alphanumeric combination 'K9' was the dominant element of the contested trademark. In light of these findings, the board found that the marks were visually similar to a low degree and phonetically similar to a high degree. Third, with respect to the overall assessment of the likelihood of confusion, it found that, in respect of articles of clothing, the low degree of visual similarity had to be given a greater weight in the overall assessment of the likelihood of confusion. It concluded that the identical nature and similarity of the goods and the high phonetic similarity between the marks were outweighed by the low degree of visual similarity. Therefore, there was no likelihood of confusion.

Rocket Dog Brands appealed to the General Court, claiming that:

• there was a strong conceptual similarity between the signs at issue;
• the Board of Appeal had erred in its assessment of the overall impression given by the marks; and
• the board had failed to properly apply the test according to which the average consumer lacks the opportunity to make a direct comparison between the marks.

The General Court first observed that, according to settled case law, a likelihood of confusion also includes a risk of association (ie, the public might believe that the goods or services come from the same undertaking or from economically-linked undertakings). Furthermore, the likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods covered.

With respect to the similarities of the marks at issue, the General Court pointed out that the global assessment of the likelihood of confusion in relation to the visual, phonetic or conceptual similarity must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. In this respect, the perception of the marks by the average consumer of the goods or services in question plays a decisive role, as the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.

The court also observed that the comparison between the signs must be made examining each of them as a whole, which - as pointed out by the court - does not mean that the overall impression conveyed to the relevant public by a composite trademark may not, in certain circumstances, be dominated by one or more of its components. Lastly, the court remarked that, with respect to the assessment of the dominant character of one or more given components of a composite trademark, account must be taken in particular of the inherent qualities of each of those components by comparing them with those of other components. In this case, where the alphanumeric combination 'K9' represented the dominant element of the contested trademark, and the stylised dog was the main and distinctive component of the earlier mark, the court observed that the Board of Appeal had correctly concluded that the marks at issue were visually similar only to a low degree, while they were phonetically similar to a high degree.

The court further rejected the claim that the trademarks were conceptually similar, pointing out that, as observed by OHIM, the contested trademark did not contain any figurative element conveying the concept of a dog; nor was there any evidence showing that the alphanumeric combination 'K9' was used in everyday language as a synonym for the word 'dog' or as a colloquial reference to that animal.

The court also rejected Rocket Dog Brands' second complaint, which alleged, in essence, that the Board of Appeal had wrongly considered that the low visual similarity outweighed other factors, in particular the identical nature of the goods and the strong phonetic similarities of the marks. The court remarked that, as OHIM rightly pointed out, the goods in question were habitually bought after visual inspection and, therefore, the visual aspect had a greater importance in the global assessment of the likelihood of confusion. Accordingly, even if the goods were similar and the marks were phonetically similar to a high degree, the similarity was outweighed by the conceptual difference and the low degree of visual similarity.

Finally, the court also rejected the third complaint, which alleged that the board had wrongly held that the relevant customer would be able to distinguish the different commercial origins of the products at issue and that the consumer’s recollection of the earlier mark was stronger in relation to the figurative element than in relation to the alphanumeric combination 'K9'. The court observed that it was not apparent from the board's decision that the latter had indicated that consumers would make a direct comparison between the marks at issue. It also pointed out that articles of clothing are generally chosen visually. Therefore, given the dominant character of the figurative element representing a dog in the earlier mark, the visual perception of the marks in question occurred before purchase and played a greater role in the global assessment of the likelihood of confusion.

Accordingly, the court dismissed the appeal and condemned Rocket Dog Brands to pay the costs.

Margherita Barié and Pietro Pouché, Carnelutti Studio Legale Associato, Milan