No greater protection for trademarks covering high-value goods

European Union

In Ford Motor Company v Office for Harmonisation in the Internal Market (OHIM) (Case T-486/07, March 22 2011), the General Court has upheld a decision of the Fourth Board of Appeal of OHIM in which the latter had found that there was no likelihood of confusion between the figurative marks CA and KA.

Alkar Automotive SA applied for the registration of the figurative mark CA as a Community trademark (CTM):

The application was opposed by Ford Motor Company on the basis of its KA trademarks - namely:

  • the word mark KA (CTM 1.064.153); and
  • the figurative mark KA (CTM 661.272).

The opposition was rejected by the Opposition Division of OHIM, and the Board of Appeal upheld the decision. Ford appealed to the General Court.

Considering that the two trademarks at issue showed some striking differences, the level of attention that the average consumer would exercise when buying products bearing the marks was of particular importance. The goods covered by the contested trademark were mainly vehicles and accessories for vehicles (eg, luminous signs, flashing lights, headlights and rear view mirrors).

The level of attention of the average consumer varies according to the category of goods at issue. Therefore, the assessment of the level of attention must always take into account the relevant goods. Products like vehicles are high-priced goods and, consequently, the level of attention will be high. However, the General Court held that consumers would also exercise great care when purchasing accessories for vehicles, regardless of whether they were bought for purely decorative purposes, to ensure the proper functioning of the vehicles or for security reasons. The General Court concluded that all the products at issue in this case would be selected with great care.

The court suggested that the purchase of goods for purely decorative purposes implies an aesthetic appraisal by the relevant consumers, which entails a high level of attention. This principle could be applied to all products for which aesthetic features play a role in the decision of the consumer, and could lead to the conclusion that trademarks used for such products will be more easily differentiated by the public.

Further, Ford contended that, as a matter of principle, trademarks covering goods which are of particular value, technologically advanced or have a value in terms of safety should enjoy greater protection. The General Court refuted this argument, holding that the protection of trademarks covering less expensive or less sophisticated goods shall not be either narrower or broader. However, the General Court recognised that the value, sophistication or impact on safety of the goods will lead to an increase in the level of attention of consumers, which will reduce the likelihood of confusion. Nevertheless, this will not affect the scope of protection of the trademarks.

Interestingly, the General Court pointed out that “the system of [CTMs] as such constitutes a restriction on free competition by reserving certain rights to operate on the market to certain operators”. However, it recognised that the system contributes to promoting and developing a single market with no distortion of competition. In the view of the General Court, Ford's approach (ie, that trademarks intended for high-priced, sophisticated goods require greater protection) would just enhance the protected position of CTM owners instead of enhancing competition.

Finally, the court turned to the alleged visual similarity of the marks at issue. The issue was whether the contested trademark would be recognised by the public as 'CA' and whether it would be understood as a sequence of letters or as a figurative sign. Alkar provided the following description in its application for registration of the CA mark: “[the mark] consists of the name CA, corresponding to the initials of the company name, written in very fancy lettering, with the ‘A’ almost completely covered by the letter ‘C’”. However the court held that the option provided by Rule 3 of the Community Trademark Implementation Regulation (2868/95) to add a description of the mark to the application would not affect the assessment made by the court. 

The court concluded that the two marks were sufficiently different to avoid a likelihood of confusion, even though there was a certain degree of phonetic similarity between them. The court agreed with the Board of Appeal that this phonetic similarity was not “notable”.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna

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