No confusion without similarity in conflict of marks with a reputation
In Hallmark Cards Inc v Rolex Promotions SA, the Second Board of Appeal of the Office for Harmonization in the Internal Market has denied the existence of likelihood of confusion between trademarks consisting of different word elements but similar crown devices.
Rolex Promotions SA had applied to register the mark ROLEX with a crown device for a very broad range of goods and services in a total of 28 classes of the Nice Classification, but excluding the class for watches. Hallmark Cards Inc opposed the application on the basis of a Community trademark and several national trademark registrations for figurative marks consisting of a crown device on its own and crown devices with the words HALLMARK and HALLMARK CROWN for various paper articles and gift items in Classes 8, 16, 20, 21, 24 and 28. The Opposition Division rejected the opposition on the basis that (i) crown devices are not very distinctive per se, and (ii) protection of the pictorial element alone would be limited to the reproduction of an identical crown. As the crowns in question were not identical, the opposition was held to be unfounded.
The Second Board of Appeal upheld the decision but followed a different reasoning. It stated that the rights conferred upon the proprietor of a trademark must be seen in the light of objectives of the EC Treaty. Likelihood of confusion must be determined by means of a global appraisal of the visual, phonetic and conceptual similarity of the marks, bearing in mind in particular their distinctive and dominant components. The board concluded that there was no similarity between ROLEX and crown device, and HALLMARK and crown device, despite a rather similar representation of a crown in both trademarks.
Rolex and Hallmark had argued that their trademarks have a reputation. The board refused to consider the issue of reputation in more detail in the context of likelihood of confusion, reasoning that reputation cannot come into play if the marks are found to be dissimilar.
The board also left unanswered the question of whether there was any similarity between Rolex's mark and Hallmark's figurative mark consisting solely of a crown device. It found that there was no likelihood of confusion between them due to (i) the limited inherent distinctiveness of Hallmark's trademark, and (ii) the fact that the relevant consumers should be considered to be reasonably well informed and circumspect.
Peter JA Munzinger, Bardehle Pagenberg Dost Altenburg Geissler, Munich
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