Word and device marks primarily dominated by word elements

European Union
In Olymp Bezner GmbH & Co KG v Office for Harmonisation in the Internal Market (OHIM) (Cases T-203/09 and T-204/09, May 5 2011), the General Court has upheld two decisions of the Board of Appeal of OHIM in which the latter had held that the trademarks OLYMP and OLIMPO (and design) were confusingly similar.

German company Olymp Bezner GmbH & Co KG filed two Community trademark (CTM) applications for the word mark OLYMP and the stylised mark OLYMP, pictured below, for goods in Class 25 of the Nice Classification.

While the word mark proceeded to registration in 2002, the stylised mark was opposed in July 2006 by Spanish company Miguel Bellido SA based on its Spanish registration for OLIMPO (and design), which covers goods in Class 25:


Miguel Bellido then became aware of the CTM registration for the word mark OLYMP. In October 2006 it filed an application for a declaration of invalidity against that mark based on the same Spanish registration for OLIMPO.
 
As it was undisputed that the goods in Class 25 were either identical or very similar, and that the relevant public consisted of the Spanish consumers, the only issue was whether OLYMP and OLIMPO were confusingly similar. The Second Board of Appeal of OHIM followed the line of argumentation of Miguel Bellido and:

  • ordered the cancellation of the word mark OLYMP; and
  • upheld the opposition against the stylised mark OLYMP, holding that OLYMP and OLIMPO were confusingly similar.
Olymp Bezner appealed against these two decisions to the General Court, which issued two almost identical decisions.
 
Before the court, Olymp Bezner argued that:
  • the device element in the OLIMPO mark had equal importance in the overall impression produced by that mark and, therefore, should not be neglected;
  • the different length and different number of syllables in the words 'olymp' and 'olimpo' were sufficient to prevent a likelihood of confusion;
  • the relevant public would not overlook the additional vowel 'O' in the OLIMPO mark; and
  • according to the German rules of pronunciation, the letters 'Y' and 'I' would not automatically be pronounced in the same way.
The General Court did not follow these arguments and upheld the decisions of the Board of Appeal.
 
The General Court first confirmed that the issue of similarity must be assessed based on the overall impression given by the marks and that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. However, the court emphasised that a composite trademark, such as the OLIMPO mark, may, in certain circumstances, be dominated by one or more of its components. Although the device element had a significant size, the General Court found that the word 'olimpo' occupied more space than the device element above it and was clearly separated from it. The court also pointed out that the word 'olimpo' is the only pronounceable element in the mark, so that the mark would be designated and remembered as 'olimpo'. Therefore, the device element was not taken into account in the comparison, even though it was not completely negligible.
 
The court further stated that:

  • the terms 'olymp' and 'olimpo' have four identical letters in the same order ('OL*MP*');
  • the letters 'Y' and 'I' are pronounced in the same way according to the relevant Spanish rules of pronunciation; and
  • the additional vowel 'O' was at the end of the word 'olimpo'.
As a possible German pronunciation of the letter 'Y' would not be taken into account by the relevant Spanish consumers, and as the public pays more attention to the beginning of marks, the court affirmed that OLYMP and OLIMPO were visually and phonetically similar. It also stated that the terms 'olymp' and 'olimpo' would be perceived as being conceptually similar by some consumers. Under these circumstances, the court came to the conclusion that the Board of Appeal had not erred in finding that there was a likelihood of confusion between OLYMP - either as a word or stylised mark - and the figurative mark OLIMPO.
 
This decision is not surprising. However, it confirms the well-established rules that:
  • a word and device mark is primarily dominated by its word element; and
  • if two terms are similar in most of their elements, slight differences at the end of one of the terms would not make a difference, even if an additional letter forms a new syllable.
Olymp Bezner thus lost its existing CTM registration, as well as its CTM application for OLYMP. One might wonder what the International Olympic Committee would say about these trademarks, as it has a clear tendency to monopolise the term 'Olympic' (and variations thereof) and to take action against trademark owners that try to register or use 'Olympic' or similar terms.
 
Carsten Albrecht, FPS Rechtsanwälte & Notare, Hamburg

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