CENTER SHOCK is confusingly similar to CENTER, says CFI

European Union
In Perfetti Van Melle SpA v Office for Harmonization in the Internal Market (OHIM) (Case T-16/08, July 1 2009), the Court of First Instance (CFI) has held that there was a likelihood of confusion between the Community trademark CENTER SHOCK and the earlier national mark CENTER.

In 2001 Perfetti Van Melle SpA was granted a Community trademark registration for CENTER SHOCK for, among other things, coffee, cacao and chewing gum in Class 30 of the Nice Classification. In 2004 Cloetta Fazer AB filed an application for a declaration that the mark was invalid under the Community Trademark Regulation (40/94). Cloetta relied on earlier Swedish and Benelux trademark registrations for the mark CENTER for identical goods. In 2005 the Cancellation Division of OHIM invalidated the CENTER SHOCK mark for all the goods for which it had been registered.

The Board of Appeal of OHIM dismissed Perfetti's appeal. The board held that taking into account the identical nature of the goods covered by the marks, as well as the visual, phonetic and conceptual similarities between them, a likelihood of confusion in Sweden and the Benelux countries had been established.

Perfetti appealed to the CFI, claiming that the marks were globally different from a visual, phonetic and conceptual point of view, even though they shared the common element 'center'.

With regard to the visual and phonetic similarity, the CFI reasoned that:

"although the trademarks at issue are of a different length and consist of a different number of words, the overall impression produced by those trademarks leads to the finding that there is a certain visual and phonetic similarity between them owing to their common component." 
 
From a conceptual point of view, the CFI held that the marks were similar on account of their common component 'center'. The fact that the CENTER SHOCK mark was also composed of the word 'shock' did not affect that finding. Relying on Medion (Case C-120/04), the CFI held that:

"where a composite mark is composed by juxtaposing one component and another trademark, that latter mark, even if it is not the dominant component in the composite mark, may still have an independent distinctive role in the composite mark. In such case, the composite mark and that other mark may be considered to be similar."

None of Perfetti's arguments cast doubts on that finding. First, Perfetti argued that the word 'center' was used descriptively and was perceived only as a qualifier of 'shock'. However, according to the CFI, it was sufficient to observe that the word 'center' - which has its own distinctive character - cannot be used as an adjective, but only as a verb or noun. The CFI also stated that the word 'shock' in the CENTER SHOCK mark did not have a strong semantic value which, combined with the word 'center', produced a global impression that was conceptually different from that of the CENTER mark. The CFI concluded that consumers might infer from the use of the word 'center' (which is not frequent in the sector at issue) that there was an economic link between the owners of all the marks including that word.

Second, Perfetti argued that several trademarks including the word 'center' had been registered for identical goods. The CFI refused to consider this argument because no documents of proof had actually been produced before OHIM. Furthermore, the CFI held that even if such documents had been produced, these trademark registrations were not capable of proving whether and to what extent marks containing the word 'center' were commonly used in the food sector.

Perfetti's action was thus dismissed in its entirety.

Maria Pereira, Allen & Overy LLP, Amsterdam

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