Weak element of complex mark may be dominant

European Union
In Travel Service as v Office for Harmonisation in the Internal Market (OHIM) (Case T-72/08, September 13 2010), the General Court has held that there was a likelihood of confusion between the marks SMARTWINGS and EUROWINGS for aviation-related activities.
On March 9 2004 Travel Service as filed an application for the registration as a Community trademark of the figurative sign SMARTWINGS for, among other things, aviation-related goods and services:

Eurowings Luftverkehrs AG opposed the application based on earlier German and international registrations for the word mark EUROWINGS and the figurative mark EUROWINGS:

The Opposition Division of OHIM upheld the opposition with respect to some of the goods and services covered by the application, finding that there was a likelihood of confusion between the marks. The Board of Appeal upheld the Opposition Division's decision and Travel Service appealed to the General Court.

The court confirmed that there was a likelihood of confusion between the SMARTWINGS mark and the earlier word and figurative marks EUROWINGS under Article 8(1)(b) of the Community Trademark Regulation (40/94) (now the Community Trademark Regulation (207/2009)) for various goods and services relating to aviation.

In particular, the court held that the Board of Appeal had rightly concluded that the word 'wings' was the dominant element of the marks. The court emphasised that the element 'wings' in the mark applied for was written in a large font and that the first letter was in upper case. Therefore, the element 'wings' held a more important position than the other elements of the mark applied for. The court added that the element 'euro' in the earlier marks indicated a European connection and, therefore, was devoid of distinctive character.

The court also pointed out that:

"the possibly weak distinctive character of an element of a complex mark does not necessarily imply that that element cannot constitute a dominant element since – because, in particular, of its position in the sign or its size – it may make an impression on consumers and be remembered by them."
The court confirmed that the marks were similar visually, phonetically and conceptually, which, together with the degree of similarity between the goods, was sufficient to justify the conclusion that there was a likelihood of confusion.

The decision demonstrates that marks which, at first sight, may seem rather descriptive ('wings' for aviation services) can prove to be surprisingly strong.
Dorothee de Rooy and Paul Reeskamp, Allen & Overy LLP, Amsterdam

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