Coexistence in part of the EU does not eliminate likelihood of confusion

European Union
In Visti Beheer BV v Office for Harmonisation in the Internal Market (OHIM) (Case T-372/09, March 21 2011), the General Court has rejected an appeal by Visti Beheer BV against a decision by OHIM’s First Board of Appeal to uphold an opposition to its application for GOLD MEISTER on the basis of the earlier Community trademark (CTM) MEISTER.

Visti filed an application in August 2006 for the registration of the stylised word mark GOLD MEISTER in gold coloured letters. The application covered various classes, including a range of goods in Class 14 of the Nice Classification relating to jewellery.

In April 2007 Meister & Co AG opposed the application under Article 8(1)(b) of the Community Trademark Regulation (40/94) (now the Community Trademark Regulation (207/2009)) on the basis of various earlier marks, notably an earlier CTM registration for the word mark MEISTER covering a range of Class 14 goods, including jewellery. In August 2008 the Opposition Division of OHIM upheld the opposition in its entirety. Visti appealed.

In June 2009 the First Board of Appeal of OHIM dismissed the appeal. It held that there was a likelihood of confusion between the marks because of the identity of the respective goods and the shared and dominant element 'Meister'. From a conceptual point of view, the board held that:
  • the relevant public, other than German speakers, would be unable to attribute any meaning to the element  'Meister'; and
  • the element 'gold' was insufficient to make the marks conceptually distinguishable.
On appeal to the General Court, Visti contended that the element 'gold' in its mark and the use of “large golden characters” made the marks dissimilar. It added that the earlier marks had a low degree of distinctiveness because of their descriptiveness, and referred the court to the Board of Appeal's decision in GOLDSHIELD (R 415 1999-1), in which it had held that GOLDSHIELD and SHIELD were not similar.

The court set out the usual criteria on the basis of which a likelihood of confusion is established, agreeing with the board that the relevant public in this context consisted of the average European consumer and professional jewellery buyers. The court also agreed with the board’s consideration of the non-German speaking consumer - and, in particular, consumers in Greece and Italy - as being relevant. None of this was contested by Visti or Meister.

The court then compared the marks, finding them similar on the following basis: 
  • Visually, the marks were similar because Visti’s mark, despite being figurative, was dominated by the word element 'Gold Meister': the font used was not unusual, and neither the font nor the colour were anything other than negligible when considering the overall impression created by the mark. Therefore, the word 'Meister', contained in both marks, made them visually similar, despite the presence in the later mark of the word 'gold'.
  • Phonetically, the court agreed with the board that the marks were similar because of the shared element 'Meister', adding that, in accordance with case law, the additional element 'gold' in Visti’s mark was incapable of changing the overall impression sufficiently to remove any likelihood of confusion.
  • Conceptually, it was not possible to compare the marks because consumers who did not speak German would not understand the word 'Meister', although the word 'gold' was descriptive of the goods.
The court then agreed with the board’s assessment that there was a likelihood of confusion between the marks. It dismissed Visti’s argument that longstanding coexistence of the marks in Germany meant that there was no likelihood of confusion: the relevant market was the entire European Union and, therefore, coexistence in part of the European Union could not eliminate a likelihood of confusion. With reference to the GOLDSHIELD decision, the court reiterated that the boards of appeal must make their decisions on the basis of Regulation 207/2009, and not on the basis of earlier case law.

The court thus rejected the appeal and ordered Visti to pay its own costs and those of OHIM.

It is difficult to disagree to any extent with the court’s decision. If 'Meister' really means nothing to EU consumers who do not speak German, then the addition of the word 'gold', or any other descriptive element, to the only real distinguishing element in a later mark is highly unlikely to make marks dissimilar without compelling evidence of coexistence across the European Union.

Chris McLeod, Squire, Sanders & Dempsey (UK) LLP, London

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