Number is up for bingo mark before General Court

European Union
In Zitro IP Sarl v Office for Harmonisation in the Internal Market (OHIM) (Case T-179/10, April 13 2011), the General Court has upheld a decision of the Board of Appeal of OHIM in which the latter had refused an application for the registration of BINGO SHOWALL in respect of goods and services in Classes 9 (computer games/programs), 28 (toys and games) and 41 (education, games of chance, casino) of the Nice Classification.

In July 2007 Zitro IP Sarl filed an application for the registration of the word mark BINGO SHOWALL. Show Ball Informática Ltda opposed the application on the basis of the following earlier Community trademark (CTM) registration for goods and services in Classes 9 and 42:

In April 2009 the Opposition Division of OHIM partially rejected the application for certain goods. Zitro appealed. In February 2010 the Second Board of Appeal of OHIM rejected Zitro’s appeal on the grounds that the two marks were likely to be confused by people who did not understand (or understood very little) English, given that:
  • the goods and services were identical or similar;
  • the two marks were visually and phonetically similar;
  • the word ‘bingo’ in the mark applied for was not sufficient to eliminate the likelihood of confusion between the marks.
Zitro appealed to the General Court, arguing incorrect interpretation and application of Article 8(1)(b) of the Community Trademark Regulation (207/2009).

The General Court dealt expeditiously with several initial questions:
  • what was the relevant public;
  • what was the relevant territory; and
  • what was the dominant aspect of the marks.
It noted that the relevant goods and services were directed at the average consumer. It did not seek to limit the average consumer to a person who understood English. In its view, people often used English words - for example, 'hardware', 'software' or 'stick' - without always understanding English in general. Therefore, the relevant public would include English and non-English speakers.

As the earlier mark was a CTM, the General Court specified that the whole of the European Union was the relevant territory. This contrasted with the Board of Appeal’s decision, which was decided on the basis of a consideration of part of the European Union.

The court agreed that 'showall' was the dominant aspect of the applicant’s mark. The word ‘bingo’ would be understood by the relevant public as meaning a game of bingo or an expression of surprise or pleasure. Where the relevant goods were games, as in the case in point, the word ‘bingo’ had a low level of distinctive character and could not be dominant, as the relevant public would consider it as ancillary to the 'showall' part ('showall' not being linked to games).
It was not contested by the applicant that the goods and services were identical or similar, and the General Court thus proceeded with a comparison of the marks.   

The court confirmed that there was a low degree of visual similarity, given that the dominant part of the earlier mark was incorporated in the applicant’s mark (ie, the letters 'S', 'H', 'O', 'W', 'A', 'L' and 'L'). The applicant’s arguments that the two marks were dissimilar because the earlier mark was a figurative mark with a particular stylisation and the applicant’s mark consisted of two separate words, with the word ‘bingo’ at the start, were rejected - these differences would have little impact on the relevant public. In terms of phonetic similarity, the court agreed with the board that the earlier mark and the word 'showall' in the applicant’s mark sounded very similar (despite the absence of the letter ‘B’).

Contrary to the applicant’s arguments, the court felt that the earlier mark would not be understood as a reference to playing football or as meaning ‘to see the ball’ by people who did not understand English. In respect of the ‘show’ part, the court felt that it would be common knowledge in many member states that this meant a show/spectacle. However, not all the relevant public would understand the word ‘ball’. For example, the Spanish word for ‘ball’ is 'balon' or 'pelota', which are not similar to the English word 'ball' and, similarly, 'football' and 'volleyball' are 'futbol' and 'voleibol' in Spanish. Therefore, at least part of the relevant public would perceive the earlier mark as referring to a show, but not necessarily to a ball.

Finally, the court conceded that there was a conceptual difference due to the inclusion of the word ‘bingo’. However, as the 'showall' part would not be understood by people who do not speak English, ‘show’ would be the only relevant part of 'showall'. Due to the low degree of distinctiveness of ‘bingo’, the court came to the same conclusion as the board that the marks were similar, albeit not to a high degree.

Given the identity or similarity of the respective goods and services and the similarity (albeit weak) between the marks, there was a relative ground for refusal of the application due to a likelihood of confusion with the earlier mark, particularly on the part of non-English speakers.
This case arguably illustrates the need for more detailed guidance about the level of similarity required before an application will fail under Article 8(1)(b). It seems harsh that an application should fail on the basis of a very low level of similarity with an earlier mark if that earlier mark does not have a high degree of distinctiveness in the relevant field.

Ellen Forrest-Charde and Chris McLeod, Squire Sanders & Dempsey (UK) LLP, London

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