General Court backs OHIM in CTM disputes

The General Court of the EU has upheld the Office for Harmonization in the Internal Market (OHIM)’s decision-making in two Community trademark (CTM) judgements published on Monday.

In Marszałkowski v OHMI, the court agreed with OHIM’s decision to refuse the figurative mark 'Walichnowy MARKO' for food products listed under class 29 of the Nice classification system on the grounds that it is confusingly similar to another registered mark, 'mar-ko'.

In Hartmann v OHMI - Protecsom, the court upheld OHIM’s decision to register the word mark 'dignitude'despite opposition from German medical group Paul Hartmann, which owns the word mark 'dignity'.

Marszałkowski v OHMI

Mark Marshall applied to register 'Walichnowy MARKO' for meat and vegetable products in 2008 but the registration was opposed by German food manufacturer Mar-Ko Fleischwaren, which owns the CTM 'mar-ko' for sausage meat products.

Mar-Ko Fleischwaren argued that Marshall’s mark was confusingly similar to its own, as the word Walichnowy appears only in small type, making MARKO the dominant element of the mark.

OHIM agreed and the mark was disallowed. Marshall appealed against OHIM’s decision, arguing that Polish consumers would be able to distinguish between the marks as Walichnowy is an indication of Polish origin, but the general court dismissed his appeal and ordered him to pay legal costs.

Helena Gajek, a patent and trademark attorney at JWP Patent & Trademark Attorneys in Warsaw, said the court was right to refuse the mark and that Marshall’s argument that Polish consumers would know the difference between the two marks is irrelevant as both are CTMs.

“The word “MARKO” plays a dominant role in the overall recognition of the disputed trademark, taking into consideration its fancy character, its position in the composition, the size of the letters MARKO, and the idea of the composition itself,” she added.

Monika Zuraw, an attorney at Wardyński i Wspólnicy in Warsaw, said that the judgement was in line with CJEU and Polish practice which dictates that adding a new element to an earlier mark does not eliminate confusion, but she also added that the case is not entirely straightforward.

“A risk of confusion is not a direct result of similarities and differences of particular elements of compared trademarks, but of comparisons between overall impression the two signs make. The words MAR-KO (in the earlier sign) and MARKO (in the later sign) are similar on the graphic and phonetic level…the only difference is a dash in MAR-KO. But this changes the impression those elements make," she said.

“The earlier sign could be perceived as an abbreviation of a longer term, making it rather distant from the word MARKO, which can be associated, at least by Polish consumers, with a masculine name -  Mark – being in fact the first name of the trade mark owner. This has an impact also on the graphic perception of the trade marks, and possibly some difference in the manner in which the words would be voiced,” she added.

Zuraw also said that although the marks use a similar word they do not closely resemble each other visually. The idea that words are more dominant than graphics in trademarks should not be applied unconditionally, she said.

“If the MAR-KO trade mark was registered as a word-graphic form as it is used on a product, would a risk confusion exist? Or if the WALICHNOWY MARKO trade mark was a word trade mark, would it collide with MAR-KO? Probably not,” she said.

Hartmann v OHMI - Protecsom

In the second case resolved on Monday, medical company Paul Hartmann AG opposed a trademark registration for the word mark 'dignitude' for products under classes 5, 24 and 25 of the Nice classification system (which includes menstruation products and sanitary towels, textiles for medical use and underwear).

Hartmann argued that the word mark, applied for by French company Protecsom SAS, is confusingly similar to its own trademark, 'dignity', which covers incontinence pads and goods under classes 5 and 10.

OHIM upheld the opposition in part, and disallowed the registration for goods under classes 5 and 24 but dismissed Hartmann’s opposition to registering the mark for goods in class 25 on the basis that the public would not be confused as the products are dissimilar, and because consumers buying Hartmann’s medical products will be displaying a high level of attention.

“This is not a novel or unusual decision, but it reiterates the general court’s stance on the similarity of goods. The relevant public is the overlap here - although the goods at issue are those in class 25, which would normally be bought by the general public, the fact that the earlier mark is for incontinence products means that the relevant public is those with incontinence issues. It provides some further clarity on a matter that the CJEU has not yet ruled on,” said Verena Von Bomhard, a partner at Hogan Lovells in Alicante.