LIBRO and LIBERO held to be dissimilar for certain goods and services

European Union
In Libro Handelsgesellschaft mbH v Office for Harmonization in the Internal Market (OHIM) (Case T-418/07, June 18 2009), the Court of First Instance (CFI) has upheld a decision of the Board of Appeal of OHIM in which the latter had held that there was a likelihood of confusion between the trademarks LIBRO and LIBERO with regard to certain goods and services.

On April 17 2002 Libro Handelsgesellschaft mbH filed an application for the registration of the mark LIBRO as a Community trademark (CTM) for a number of products and services in Classes 9, 38 and 42 of the Nice Classification.

On June 2 2003 an individual, Dagmar Causley, opposed the application under Article 8(1)(b) of the Community Trademark Regulation (40/94) based on the earlier CTM trademark LIBERO, which was registered for a number of goods and services in Classes 9, 38 and 42 (including "software creation and design" and "online services").
 
The Opposition Division of OHIM partially accepted the opposition, holding that there was a risk of confusion on the part of the relevant public. The Opposition Division rejected the application with regard to certain goods and services in Classes 9, 38 and 42, which were deemed to be identical or similar to those covered by the earlier mark.
 
Libro appealed to the Board of Appeal of OHIM, which partially annulled the decision of the Opposition Division and dismissed the opposition with regard to the following goods and services: 
  • "apparatus for the recording, transmission or reproduction of sound and images" in Class 9;
  • "radio and television station services; news agencies, in particular the gathering and supplying of information" in Class 38; and 
  • "scientific and research services and design relating thereto and industrial analysis and research services” in Class 42.
Libro appealed to the CFI, requesting that the opposition be rejected in its entirety.
 
Before the CFI, Causley requested that the appeal before the Board of Appeal be declared inadmissible because Libro's statement of grounds was signed on the first page only. The CFI dismissed this argument, holding that the appeal had been filed in accordance with the provisions of the Community Trademark Implementation Regulation (2868/95) (Rules 48 and 49).
 
In addition, Libro argued that the board had infringed Article 8(1)(b) of the Community Trademark Regulation. First, the CFI held that:

  • the mark applied for was included in the earlier mark in its entirety; and
  • the marks were similar from a visual and phonetic point of view.
The CFI also acknowledged the fact that the earlier mark was represented in black and white, while the mark applied for was in colour. However, the CFI confirmed that the protection afforded to the earlier mark extended to any colour combination.
 
The CFI further held that the marks were similar from a conceptual point of view because:

  • the Spanish word 'libro' means 'book'; and
  • the earlier mark included the image of an open book above the letter 'I'.
Turning to the comparison between the goods and services covered by the marks, the CFI confirmed the Board of Appeal's finding that:
  • "apparatus for the recording, transmission or reproduction of sound and images” in Class 9 were not similar to “computer software” and “software creation and design";
  • "radio and television station services; news agencies, in particular the gathering and supplying of information" in Class 38 were not similar to "online services"; and
  • "scientific and research services and design relating thereto and industrial analysis and research services" in Class 42 were not similar to "software creation and design".
The action was thus dismissed.

The decision clarifies that even though some of Libro's goods use computer software, the similarity with the goods covered by the earlier mark would be too remote to create any risk of confusion. Similarly, the CFI confirmed that online services are different from information services and software creation is different from research services.
 
Cristina Bercial-Chaumier, Bureau Casalonga & Josse, Alicante, with the assistance of Jessica Melanie Band, a law student from Georgetown University

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