Volvo fails to prevent registration of LOVOL for cars
In Volvo Trademark Holding AB v Office for Harmonisation in the Internal Market (OHIM) (Cases T-524/11 and T-525/11), the General Court has upheld two decisions of the First Board of Appeal of OHIM finding that the signs at issue were dissimilar and that, therefore, Article 8(5) of the Community Trademark Regulation (207/2009) did not apply.
On April 20 2006 Hebei Aulion Heavy Industries Co Ltd filed two applications for registration of the following figurative signs as Community trademarks (CTMs):
Case T-524/11 Case T-525/11
The applications were published in the Community Trademarks Bulletin No 39/2006 of September 25 2006.
The goods in respect of which registration was sought fell within Class 7 ("harvesters; agricultural machines, road roller; excavators; loaders; bulldozers; concrete mixers; cranes; grain threshing machines; rice transplanters") and Class 12 ("automobiles; vehicles for transport for agricultural use; motorcycles; derrick cars; cycle cars; bicycles; electric vehicles; engines for land vehicles; fork lift trucks; concrete mixing trucks; tractors") of the Nice Classification.
On December 21 2006 Volvo Trademark Holding AB filed a notice of opposition pursuant to Article 42 of Regulation 40/94 (now Article 41 of Regulation 207/2009) based on the following earlier trademarks, among others:
the Community word mark VOLVO (No 2 361 087), covering, among others, goods in Classes 7 and 12;
a CTM application for the figurative mark VOLVO (reproduced below), covering, among others, goods in Classes 7 and 12 :
a national figurative mark (reproduced below) registered in the United Kingdom under No 747 361 and covering goods in Class 12:
a national figurative mark (reproduced below) registered in the United Kingdom under No 1 408 143 and covering goods in Class 7:
The grounds relied on in support of the oppositions were those referred to in Article 8(1)(b) and Article 8(5) of Regulation 40/94 (now Article 8(1)(b) and Article 8(5) of Regulation 207/2009).
By decisions of July 29 2010 (Case T-525/11) and September 3 2010 (Case T-524/11), the Opposition Division of OHIM rejected the oppositions in their entirety, on the ground that the marks at issue were not sufficiently similar for the purposes of Article 8(1)(b) and Article 8(5) of Regulation 207/2009.
On September 27 2010 Volvo filed notices of appeals with OHIM.
By decisions of June 23 2011 (Case T-525/11) and July 219 011 (Case T-524/11), the First Board of Appeal of OHIM upheld the Opposition Division’s decisions and dismissed the appeals. The Board of Appeal stated that that the relevant public’s level of attention was particularly high, not least because of the price of the goods concerned and the highly technical nature of those goods. In addition, the signs at issue were dissimilar and thus there could be no likelihood of confusion between the signs for the purposes of Article 8(1)(b) of Regulation 207/2009. Since the signs were dissimilar, the condition relating to similarity when applying Article 8(5) was not satisfied. Volvo appealed to the General Court.
Before the General Court, Volvo claimed that the court should annul the contested decisions and refuse the applications for registration of LOVOL. In support of its actions, Volvo raised a single plea in law alleging infringement of Article 8(5) of Regulation 207/2009.
The application of Article 8(5) is subject to three cumulative conditions, and failure to satisfy one of them is sufficient to render the provision inapplicable. These conditions are as follows:
the marks at issue must be identical or similar;
the earlier trademark on which the opposition is based has a reputation; and
there is a risk that use without due cause of the trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.
In both cases, the General Court addressed only the first condition (ie, the similarity of the signs).
As established by the Board of Appeal, the relevant territory was the European Union and the relevant public consisted of both the general public and a specialised public interested in professional vehicles and machinery. The public’s level of attention was considered to be high because of the nature and cost of the goods. This was not contested by the parties.
With regard to the similarity of the marks, the General Court stated that the condition relating to the similarity between the signs requires the existence, in particular, of elements of visual, aural or conceptual similarity, so that, from the point of view of the relevant public, the marks at issue are at least partially identical as regards one or more relevant aspects. The assessment of the visual, aural or conceptual similarity of the marks at issue must be based on the overall impression given by those marks, account being taken, in particular, of their distinctive and dominant components.
With regard to the visual aspect of the comparison, the General Court noted that, according to case-law, consumers normally attach more importance to the beginnings of words, which were different in the signs at issue.
Further, regarding Volvo’s argument that the first syllable of the trademark LOVOL is a reversal of 'vol', the court noted that Volvo had not provided a specific example of any European Union language according to whose rules the trademark LOVOL breaks down into the syllables 'lov' and 'ol'. Even assuming that the first syllable of the trademark could be 'lov' in some of the languages, Volvo had not provided any evidence to substantiate its assertion that the average consumer would be inclined to divide a short meaningless word – LOVOL – into syllables ('lov' and 'ol') and then read the first syllable backwards.
The General Court also pointed out that both the first and the last letters of the signs at issue were different, and that the marks applied for contained two 'L's, whereas the trademark VOLVO contained two 'V's. Further, it was of importance that the letter combination 'vol', although contained in both marks, was located at the beginning of the earlier word mark, but at the end of the mark applied for.
As the average consumer was deemed to distinguish instinctively between the letters of the Roman alphabet, the General Court found that Volvo’s argument concerning the alleged similarity of the capital letters 'V' and 'L' was invalid, especially as the signs at issue were relatively short.
The General Court concluded that the mere fact that the signs at issue contained the letters 'V', 'L' and 'O' and the letter combination 'vol' was not sufficient to cause the relevant public to make a connection between the signs.
With regard to the aural aspect of the comparison, the General Court stated that the letters 'L' and 'V' were pronounced quite differently, and that the signs had a different rhythm of pronunciation. The mere fact that the signs at issue contained the letters 'V', 'L' and 'O' and included the letter combination 'vol' was not sufficient to cause the relevant public to make a connection between those signs on the basis of its aural perception of them.
With regard to the conceptual aspect of the comparison, Volvo argued that the consumers could make a connection between the signs LOVOL and VOLVO since the number of car manufacturers is relatively limited. Accordingly, those consumers would ask themselves whether the new trademarks for cars had any connection with the old, reputed trademark VOLVO. The General Court stated that the signs VOLVO and LOVOL were not composed of words which had a particular meaning and could be understood by the relevant public and, as the signs in question had no meaning, the court found that it was not possible to carry out a conceptual comparison.
Against this background, the General Court found that the contested decisions had to be upheld insofar as the Board of Appeal had concluded that, for the purposes of applying Article 8(5), the signs at issue were dissimilar.
Volvo’s single plea in law was rejected and the actions were dismissed.
Nina Ringen, Rønne & Lundgren, Copenhagen
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