OHIM decisions annulled for failure to assess descriptiveness for each service

European Union
In CheapFlights International Ltd v Office for Harmonisation in the Internal Market (OHIM) (Cases T-460/09 and T-461/09, May 5 2011), the General Court has annulled two decisions of the Board of Appeal of OHIM which allowed oppositions by the proprietor of an earlier Irish figurative mark containing the phrase 'cheapflights', as well as a representation of an aeroplane, against two Community trademark (CTM) applications for figurative marks also containing these elements.  

Trademarks applied for


Earlier registered trademark

The Board of Appeal held that the word element 'cheapflights' and the aeroplane device were common to both marks. The board then decided that these elements were descriptive in relation to ‘large parts’ of the stated services and, therefore, there was a low degree of similarity between the marks. The board did not, however, identify the ‘large parts’ of the services that it was referring to, and considered that analysing phonetic and conceptual similarity would be irrelevant in relation to elements which are purely descriptive in nature.

Overall, the board concluded that the low degree of similarity between the marks and the low degree of distinctiveness of the earlier mark excluded any likelihood of confusion on the part of the relevant public (even though the services at issue were in part identical and in part similar) and, therefore, the oppositions to the later CTM applications failed. The opponent appealed on the grounds that the Board of Appeal had erred in finding that there was no likelihood of confusion between the marks at issue.

In annulling the board’s decisions, the General Court held that the board had failed to properly analyse the allegedly non-distinctive nature of the common elements in relation to each of the individual services claimed. In particular, the court held that the board had erred in not undertaking a complete analysis of the allegedly non-distinctive character of the common elements of the marks by assuming that these elements were descriptive for ‘large parts’ of the services concerned. In reaching this conclusion, the court noted that the board had clearly not considered that, while the word element 'cheapflights' and the aeroplane representation may be descriptive of certain travel services offered under the marks, such elements were arguably not descriptive of services such as ‘car hire services’ or ‘organisation of competitions’, being services which were also offered under the marks.

The General Court thus annulled the board’s decision on the grounds that the board had erred in failing to consider whether or not the common elements of the marks were descriptive of each of the individual services offered under the marks and, in doing so, had failed to show to the requisite standard that there was no likelihood of confusion between the respective marks.

Alistair Payne and Anna Gibson, Matheson Ormsby Prentice, Dublin

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