Word element in secondary position cannot be disregarded

In Oracle America Inc v Office for Harmonisation in the Internal Market (OHIM) (Case T-618/13, December 11 2014), the General Court has considered the similarity of the marks AAVA CORE and JAVA.

Aava Mobile Oy is a mobile platform and product development company and the biggest original design manufacturer in Europe for mobile devices. The company sought registration for the word mark AAVA CORE in Classes 9, 38 and 42 of the Nice Classification.

Oracle America Inc is a multinational computer technology corporation operating mainly in the enterprise software and computer hardware industry. Oracle filed a notice of opposition with OHIM based on the earlier Community trademark JAVA and on the well-known mark JAVA. The grounds of the opposition were those set forth in Articles 8(1)(a) and (b) and Article 8(5) of the Community Trademark Regulation (207/2009).

The Opposition Division of OHIM, however, rejected Oracle’s opposition, stating firstly that there was no likelihood of confusion between the signs and, secondly, that there was no link between them. Oracle appealed, but the Second Board of Appeal of OHIM dismissed the action, stating that the signs were not similar. Finally, Oracle filed an appeal to the General Court, requesting the annulment of the board's decision. Oracle alleged infringement of Article 8(1)(b) and Article 8(5). In spite of the numerous arguments set forth by Oracle, the General Court dismissed the appeal.

The court's decision was based on the following conclusions, among others:

• The Second Board of Appeal had been right to consider the overall impression of the mark, and not only of the first word 'aava'. As stated in earlier case law, the relevant public pays more attention to the beginning of a sign than to the end. This means that the trademark applied for had to be taken into consideration in its entirety, paying more attention to the word 'aava', but not disregarding the word element 'core'.

• The significant visual differences - namely, the visually “very noticeable” presence of three 'A's in the word 'aava' in contrast to the word 'java', which has only two 'A's and a letter 'J' - created a different overall impression and neutralised the possible similarity of the shared group of letters 'ava'. Additionally, as the word 'core' could not be disregarded, it also created a difference between the marks. The Board of Appeal had thus been right in finding that the marks were not visually similar.

• The letters 'J' and 'A', which are included at the beginning of the first syllable of the word elements, are pronounced differently in different languages of the European Union. In addition, earlier case law confirmed that the relevant consumer generally retains the beginning of the mark more than its end. Therefore, it is not convincing to argue that the first letter of a word is generally missed by the person hearing it. Finally, the trademark applied for contained three or four syllables (depending on the language in which it was pronounced), and only one of them - 'va' - was shared by both marks. Consequently, the marks were phonetically dissimilar.

• The marks were not conceptually similar as they both had a different meaning. For the Finnish-speaking part of the relevant public, the first word 'aava' would mean 'open', whereas for the majority of the relevant public, it had no particular meaning. For the relevant public, the mark applied for either had no meaning, or referred to the concept of 'open' or to certain digital materials. Moreover, the earlier trademark conceptually referred to the island of Java in all the languages of the European Union.

• Therefore, the Board of Appeal was right to state that the marks AAVA CORE and JAVA were dissimilar as they were not visually, phonetically or conceptually similar. Consequently, there could not be a likelihood of confusion between the signs.

• Finally, the Board of Appeal had also correctly stated that, as the signs were not similar, the conditions for broader protection to be granted to the earlier JAVA mark under Article 8(5) were not satisfied.

Jukka Palm, Berggren Oy Ab, Helsinki