Scope of obligation to state reasons under Article 75 examined

European Union
In Accenture Global Services GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-244/09, October 7 2010), the General Court has held that the word mark ACCENTURE and the figurative mark ACSENSA were not similar.
 
Silver Creek Properties SA filed an application for the registration of the following figurative sign as a Community trademark for goods and services in Classes 9, 35, 36, 38, 41 and 42 of the Nice Classification (in particular, business management, business administration, business services, accountancy and resource management services, financial affairs and financial advice):

Accenture Global Services GmbH filed a notice of opposition based on German and Community registrations for the word mark ACCENTURE, and on German and Community registrations for the following figurative mark:

The marks on which the opposition was based covered goods and services relating to the financial sector.
 
Both the Opposition Division and the Second Board of Appeal of OHIM found that the marks were dissimilar within the meaning of Article 8(1)(b) of the Community Trademark Regulation (207/2009).
 
In particular, the Board of Appeal held that, visually, the Community word mark ACCENTURE and the mark applied for were dissimilar, noting that:
  • the marks had different lengths; and 
  • the endings 'ture' and 'sa' consisted of completely different letters.
These differences outweighed the fact that the marks shared the letter combinations ‘ac’ and ‘en’ in the same position. From a phonetic point of view, the board agreed with the Opposition Division that the marks were dissimilar: although the first two syllables of the marks could be said to be identical or highly similar, the endings 'ture' and 'sa' were clearly different. Finally, the board held that there was no concept which might strengthen or weaken the overall visual or phonetic impression of the marks, since they had no meaning in the relevant languages.
 
Based on the foregoing, the Board of Appeal agreed with the Opposition Division that there was no need to examine the issue of the likelihood of confusion in relation to the other marks on which the opposition was based, noting that the latter were either identical to, or even more dissimilar from, the earlier Community word mark. For the same reason, the board also agreed with the Opposition Division that it was not necessary to consider whether the goods and services concerned were similar, and whether the earlier marks had a reputation in the market. 
 
Accenture appealed to the General Court, alleging infringement of Articles 8(1)(b), 75 and 76 of the regulation. In particular, Accenture claimed that the board had failed to give adequate reasons, since it had refused to examine the likelihood of confusion in relation to the other marks on which the opposition was based. Furthermore, Accenture alleged that the board had failed to examine the identity or similarity of the goods and services, as well as the reputation of the earlier marks, which had to be taken into account in the overall assessment of the likelihood of confusion.
 
The court dismissed the action. While recognising the principle of interdependence between the relevant factors - and, in particular, the similarity of the marks and the goods and services (see Canon (Case C-39/97)), the court highlighted that such an overall assessment of the likelihood of confusion is required only where the two cumulative conditions for the application of Article 8(1)(b) are a priori fulfilled, which was not the case here.
 
For the same reason, the court also agreed with the board that it was not necessary to assess the likelihood of confusion in relation to the other marks or to examine the alleged reputation of the earlier marks, since the board had already held that the word mark was not similar to the mark applied for. The plea alleging infringement of Articles 75 and 76 was thus rejected.
 
Stephan Schneller, Maiwald Patentanwalts GmbH, Munich

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