'Ice' marks held to be confusingly similar in controversial decision

European Union
In Icebreaker Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-112/09, September 8 2010), the General Court has held that there was a likelihood of confusion between the marks ICEBREAKER and ICEBERG among the Italian public.
On May 30 2003 Icebreaker Ltd, which is established in New Zealand, filed an application for the registration of the word mark ICEBREAKER as a Community trademark in Classes 9, 24 and 25 of the Nice Classification. On November 2 2004 Italian company Gilmar SpA lodged an opposition against the application based on a number of national and international registrations, including the earlier Italian word marks ICE and ICEBERG for goods in Class 25.
The Opposition Division and, subsequently, the Fourth Board of Appeal of OHIM upheld the opposition. The board considered that there was a considerable degree of visual similarity between the marks, but a low degree of phonetic similarity. The board also stated that the conceptual comparison did not affect the visual and aural similarities between the marks. Icebreaker appealed to the General Court.
The General Court first held that the Board of Appeal had been right in finding that there was a considerable visual similarity between ICEBERG and ICEBREAKER. The court also found that the board had not erred in finding that there was a lower than average level of phonetic similarity between the marks.
With regard to the conceptual comparison, the court held that only part of the relevant Italian public was able to understand English. In this regard, the court stated that the words ‘iceberg’ and ‘icebreaker’ differed to a certain extent in that one referred to ice and the other to a boat designed to break ice. The court recognised that the relevant public might make a connection between these words - however, only the ICEBERG mark would be regarded as having a clear meaning, while the ICEBREAKER mark would be devoid of any clear meaning for the relevant public. The court thus concluded that the conceptual comparison was not decisive and did not affect the visual and phonetic similarities or differences between the marks.
Turning to the global assessment of the marks, the court held that the similarities between the marks, the identical nature of the goods at issue and the distinctive character of the earlier mark on the Italian market were sufficient to conclude that there was a likelihood of confusion between the marks.
Arguably, this decision is quite perplexing. In particular, the finding that the visual similarity between the mark was "considerable" may be regarded as excessive. Moreover, the importance and role given to the conceptual level of comparison appear unclear - and, one may even say, baffling. What is the point of carrying out such a detailed analysis of the conceptual similarity (to the extent that the analysis of the visual and phonetic similarities may be said to be limited) if, in the end, it is regarded as not being decisive? Moreover, in its global assessment, the court relied mainly on the identity of the goods and the distinctiveness of the earlier mark to conclude that there was a likelihood of confusion.
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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