ZIPCAR Case highlights importance of aural similarity
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In Zipcar Inc v Office for Harmonization in the Internal Market (OHIM) (Case T-36/07, June 25 2008), the Court of First Instance (CFI) has upheld a decision of the Second Board of Appeal of OHIM in which the latter had allowed an opposition against the registration of the mark ZIPCAR.
In April 2003 Zipcar Inc filed an application to register ZIPCAR as a Community trademark for the following services in Class 39 of the Nice Classification:
"arrangement of travel and transportation; transportation reservation services; motor vehicle sharing services; vehicle rental; arrangement of rental vehicles; vehicle rental reservation services; scheduling, planning, organizing, managing and providing the temporary use of motor vehicles; information, advisory and consultancy services relating to the foregoing."
Canary Islands Car SL, the owner of the registered trademark CICAR in Spain for services in Class 39 ("vehicle rental reservation services"), opposed the application on the grounds that there was a likelihood of confusion between the marks under Article 8(1)(b) of the Community Trademark Regulation (40/94).
The Opposition Division of OHIM upheld the opposition. Zipcar appealed. The Board of Appeal dismissed the appeal, holding as follows:
- The relevant public is the average Spanish consumer of everyday consumer goods.
- The services covered by the two marks were identical or at least very similar as regards some of those services, and not materially different as regards others.
- The marks had no conceptual content and were not visually similar, but were phonetically similar. Given that the majority of car rental contracts were concluded over the telephone, it was this aural similarity which was critical.
- As a result, there existed a likelihood of confusion.
On appeal to the CFI, Zipcar argued as follows:
- The relevant public is English speaking since the car rental business is for tourists, business people or affluent individuals. Furthermore, most of the population of the Canary Islands speaks English.
- Each mark had a different conceptual content. On the one hand, CICAR consisted of the elements 'CI' (an abbreviation for Canary Islands) and 'car', evoking motorized transport services on the Canary Islands or bringing to mind 'cigarro' (Spanish for 'cigar'). On the other hand, ZIPCAR consisted of 'zip' and 'car', evoking rapid and/or convenient transport services or bringing to mind 'zipizape' (Spanish for 'hubbub') or 'ziper' ('zip'). Even assuming that the marks had no conceptual content, this fact was relevant to the issue of likelihood of confusion and should have been taken into account by the board.
- The aural similarity was limited: CICAR sounded soft and flowing, whereas ZIPCAR was hard sounding, with a pronounced 'P' and an unusual ‘PC' combination.
- Any aural similarity was unlikely to result in a likelihood of confusion as the car rental market is a very visual one. The board should have attached greater importance to the visual dissimilarity of the marks and taken into account the fact that the relevant public is particularly attentive because of the nature of the services in question.
- CICAR, being an abbreviation of 'Canary Islands Car', lacked distinctiveness and should be given only limited protection.
- As a result of the above, there was no likelihood of confusion, even if it were accepted that the primary means of engaging car rental services was oral.
The CFI upheld the findings of the board on the following grounds:
- The relevant public is the average consumer of everyday consumer goods. Car hire is not just the preserve of tourists, business people and the affluent. The average consumer must be assessed over the whole territory of the member state in which the earlier trademark is protected (ie, Spain). Therefore, the relevant public was Spanish speaking with no particular knowledge of English. Furthermore, the CFI stated that the public is not particularly attentive when choosing car rental services.
- The services covered by the two marks were in part identical, in part very similar and in part not materially different.
- The marks were visually dissimilar (diminished by the fact that each had five or six letters and the same second and last three letters).
- The marks lacked a conceptual content. A Spanish speaker would not recognize the individual elements of each mark or the evocative meaning of each mark. The links between the marks and the various Spanish words were weak. However, a Spanish consumer was able to recognize the word 'car' common to both marks, which would bring the marks conceptually closer for the purposes of assessing their similarity.
- Phonetically, the marks were very similar. Spanish-speaking consumers would not pronounce the marks in an English way. Therefore, under Spanish rules of pronunciation, the first letter of the two marks would be pronounced in the same way and the 'PC' sound in ZIPCAR would be largely inaudible. The phonetic element of the mark played a decisive role in the public choosing car rental services.
- CICAR was distinctive and enjoyed full protection.
Therefore, the CFI concluded that there was a likelihood of confusion between the two marks.
This case is a useful reminder that the aural similarity between an existing and a later mark alone can be decisive when assessing the registrability of the latter.
Gillian Dennis, Hammonds LLP, London
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