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1 June 2012TrademarksChris McLeod

Top dogs: the General Court and OHIM

In Case T-462/09, August Storck KG v The Office for Harmonization for the Internal Market (OHIM) (January 12, 2012), the General Court rejected an appeal against the refusal of Storck’s Community trademark (CTM) application for the word mark ‘Ragolizia’ on the basis of an opposition based on an earlier registration of the word mark ‘Favolizia’.

This case confirmed that the court will be reluctant to find that consumers have anything but a low level of attention when buying everyday consumer products such as foodstuffs, and that if marks share a majority of letters, then phonetic and visual similarity and, therefore, a likelihood of confusion, are almost inevitable.

In Case T249-10, Kitzinger & Co (GmbH & Co KG) v OHIM (January 17, 2012), the General Court upheld a decision of the Fourth Board of Appeal to reject Kitzinger’s CTM application filed in May 2005 for the stylised mark ‘Kico’, covering goods in class 16, on the basis of earlier registrations of ‘Kika’.

Kitzinger had alleged that there was no likelihood of confusion because the goods were intended for different consumers, the earlier mark had an average degree of distinctiveness and there were visual and phonetic differences between the marks. However, the court’s findings in relation to the marks and goods were that they were similar or identical, and it was, therefore, almost inevitable that it would agree with the board that there was a likelihood of confusion.

In Case 332/10, Viaguara SA v OHIM (January 25, 2012), the court rejected an appeal against the First Board of Appeal’s decision to refuse a CTM application for a mark deemed too close to ‘Viagra’, namely ‘Viaguara’.

The court held that the applicant’s use of Viaguara would exploit, without any financial compensation, the power of attraction, reputation and prestige of the Viagra mark by using the marketing investment of Pfizer to promote its own goods, and the consumer would be inclined to buy Viaguara’s goods believing that they would have a similar effect to Viagra. As Viaguara could not demonstrate any fair use of the mark, the appeal failed.

In Case T-353/09, mtronix OHG v OHIM, (February 1, 2012), the court rejected an appeal against the Fourth Board of Appeal’s decision to refuse in part a CTM application for mtronix for various class 9 goods following an opposition based on an earlier registration of Montronix covering class 9 goods.

The court held that the two marks were visually, phonetically and conceptually similar and that the relevant goods were either identical or similar, so there would be a likelihood of confusion between the marks for the relevant public (specialists as well as the general public).

In Case T-321/09, skytron energy GmbH & Co KG v OHIM (February 2, 2012), the court upheld OHIM’s refusal on absolute grounds to register the word mark ‘Arraybox’.

“ThE CoURT hELd ThAT ThE APPLiCANT’s UsE oF ViAgUARA WoULd EXPLoiT, WiThoUT ANY FiNANCiAL ComPENsATioN, ThE PoWER oF ATTRACTioN, REPUTATioN ANd PREsTigE oF ThE ViAgRA mARK.”

The General Court considered whether the mark had the direct and specific relationship required in relation to all of the goods and services for which registration was sought.

It agreed with the First Board of Appeal that the function of the apparatus and instruments to be used in conjunction with power generation in class 9 required, inter alia, the use of arrays which are commonly arranged in data boxes. Moreover, the services applied for in classes 37, 38 and 42 required the provision of such data boxes, or directly referred to the repair, installation or maintenance of these boxes. The court therefore upheld OHIM’s decision that because of the descriptive meaning of Arraybox in relation to all of the goods and services, the application had to fail.

In Case T-305/10, Marlies Hartmann-Lamboy v OHIM (February 7, 2012), the court rejected an appeal relating to an opposition to a CTM application for ‘Dynique’ on the basis of an earlier CTM registration of ‘Diptyque’.

Looking at the usual considerations of visual, phonetic and conceptual similarity, the court held that the fact that both marks shared the first letter D, and suffix que, and had six letters in common, meant that the differences arising from the letters which the marks did not share—P, T and N—were insufficient to affect their visual similarity.

The court also held that phonetically the marks were even more similar, due to the syllables Di/Dy and ique having the same pronunciation; and that, alongside no evidence that consumers would grasp the meaning of Dyptique (a painting having two parts) when purchasing the goods in question, any conceptual differences were insufficient to overcome the visual and phonetic similarities.

The court therefore found that on a global appreciation, there was a likelihood of confusion between the marks, rejected the appeal and awarded costs against the appellant.

In a relatively rare scenario, in Case T-64/11, Run2Day Franchise BV v OHIM (February 7, 2012), the court overturned a decision of OHIM's First Board of Appeal which had overturned a decision of the Opposition Division, which itself had upheld an opposition, based on earlier marks, to a CTM application for a figurative mark containing the element 'Run 2', on the basis of earlier marks also containing the elements Run and 2.

The court disagreed with the board, concluded that it had made errors in assessing the degree of similarity between the marks and its global appreciation of the likelihood of confusion, and overturned the boardfs decision.

It is tempting to conclude that the board of appeal erred alarmingly. However, it is relatively easy to follow the board's lines of argument and concur, in view of the arguably low distinctiveness of all the marks in question. The most compelling impression left by the judgment is the comprehensive manner in which the court dismantled the boardfs decision.

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