Volvo fails to prevent registration of SOLVO

In Grebenshikova v Office for Harmonisation in the Internal Market (OHIM) (Case T-394/10, December 5 2013), the General Court has considered the likelihood of confusion between the figurative mark SOLVO and the earlier word mark VOLVO after years of battle by the parties in the European instances.

In 2003 Elena Grebenshikova filed a Community trademark application for the registration of the figurative mark SOLVO for goods in Class 9 of the Nice Classification.

Following a restriction, the application covered the following goods: "computer programs for warehouse management systems and computer programs for container terminal systems". Upon publication of the application, Volvo Trademark Holding AB filed an opposition based on its earlier trademark VOLVO, mostly known for cars and trucks. The VOLVO mark is registered for computer software in Class 9 and vehicles in Class 12.

The Opposition Division of OHIM, and subsequently the Second Board of Appeal, rejected the opposition based on a lack of similarity between the signs SOLVO and VOLVO. The matter was brought before the General Court, which found that there was a certain degree of phonetic similarity. The General Court thus annulled the decision of the Second Board of Appeal and referred the case back to the First Board of Appeal for a global assessment of the likelihood of confusion based on phonetic similarity.

The First Board of Appeal upheld the opposition and rejected the application for the SOLVO mark. The Board of Appeal found that, even though the earlier trademark did not have a reputation as regards "computer software", its reputation in the field of cars meant that it had a higher degree of distinctive character in the field of IT goods, such as software. Furthermore, the board stated that the visual perception of the marks at issue did not outweigh their phonetic aspect in such a manner as to exclude likelihood of confusion.

Grebenshikova brought the matter before the General Court. The case centred around the question of likelihood of confusion under Article 8(1)(b) of the Community Trademark Regulation (207/2009), including the level of attention of the relevant public and the similarity of the marks at issue.

It is settled case law that the risk that the public might believe that the goods in question come from economically-linked undertakings constitutes a likelihood of confusion. The General Court examined whether that was the case here.

The General Court first found that the software covered by the mark applied for was aimed solely at professionals, such as managers of warehouse complexes or managers of container terminals in seaports. Therefore, the relevant public consisted only of that specialist public.

In this respect, the General Court emphasised that the software was aimed at undertakings and that it was not purchased on a daily basis. Buying the software could involve significant investments and constitute an essential work tool for some employees. Having regard to those factors, the General Court concluded that the relevant public’s degree of attention would be particularly high.

The General Court then found that the signs at issue were not visually and conceptually similar, but that there was a degree of similarity in view of the identical pronunciation of four out of five letters.

The General Court noted that the purchase of the software in question constituted a significant investment on the part of specialist undertakings, since it was extremely specialised and expensive and it was often developed over many years in collaboration with the consumer. Therefore, the employees who were responsible for its acquisition would carefully examine the characteristics and the content of the software on account of the importance of their choice and they would inevitably see the image of the sign applied for, given that it is displayed on the producer’s promotional documents and appears on its website. In the course of such a selection process, the users would be aware not only of the characteristics of the goods, but also of the identity of the producers and the marks on the market, and would therefore be very attentive to even slight differences between the marks.

Having regard to these considerations, the General Court found that, even though the initial information regarding the software was received orally, the consumers would eventually see the image of the sign which distinguishes the signs at issue, and any doubts which the phonetic similarities may have given rise to regarding the commercial origin of the goods would be dispelled.

Consequently, the General Court found that the visual dissimilarities outweighed the phonetic similarities between the signs at issue, contrary to what the First Board of Appeal had found. Therefore, in spite of the identity of the goods and the high level of distinctiveness of the earlier mark, there was no likelihood that the consumers, who were found to be particularly attentive, might think that the goods covered by the signs at issue came from economically-linked undertakings.

This decision illustrates the delicate balance between all the factors to be taken into account in the global assessment of the likelihood of confusion. Because of the reputation of the VOLVO mark for cars, the mark has a high degree of distinctive character, which is usually a factor in favour of a broad scope of protection. The phonetic similarity when the marks SOLVO and VOLVO are used orally would point in the direction of a likelihood of confusion. However, these factors were found to be offset by the fact that the relevant customers would be able to compare the signs visually at a later stage, which would - because of their high level of attention - eliminate any initial confusion.

Lisbet Andersen, Bech-Bruun, Copenhagen