General Court backs OHIM in two CTM cases
The General Court of the EU has supported the Office for Harmonization in the Internal Market (OHIM)’s decision-making in two cases published on Thursday.
In the first – Present-Service Ullrich v OHIM – the court said the Community trademark (CTM) registry was right to uphold an appeal against a registration for babilu, as it was too similar to an existing CTM, babidu.
Ruling in a separate case, the court said OHIM correctly rejected K2 Sports Europe’s opposition to a figurative mark registration. The ski company argued the mark, which used the word sport, included a design similar to a letter k – and therefore infringed its k2 sports CTM.
The court dismissed both actions.
German marketing company Present-Service Ullrich applied for babilu in 2008 for providing email and online advertising services. Spanish company Punt-Nou opposed the mark in 2009, citing its older CTM for babidu, registered for commercial retailing and publicity services.
OHIM upheld the opposition in March 2010 and, on appeal, the Second Board of Appeal dismissed the opposition in November that year. The board said the marks covered identical services and were very similar, meaning there was a likelihood of confusion.
On January 31, the General Court agreed that the services were identical, particularly as there was no difference between ‘advertising’ and ‘publicity’, as Present-Service had claimed. It added that the babidu mark was inherently distinctive and the marks were similar, both aurally and visually. The court said there was a likelihood of confusion.
The case is interesting because it shows that the language of a CTM application – in this case Spanish – must be carefully translated to provide a specification in another language, said Imogen Fowler, partner at Hogan Lovells in Alicante.
“The word ‘publicidad’, which means ‘advertising’ and was included in the earlier application filed in Spanish, was mis-translated – presumably by OHIM – into English. It was translated as ‘publicity’ – not ‘advertising’ – allowing Present Service to claim that there was a difference between ‘advertising and ‘publicity’.”
In the second case, sports clothing company Kahru Sport Iberica applied for a figurative CTM in 2008. K2 Sports opposed the application in 2009, referring to its older k2 sports CTM.
In 2010, the opposition division rejected K2’s appeal, saying there was no likelihood of confusion. OHIM’s Fourth Board of Appeal rejected the opposition again in November 2011. It said the signs were dissimilar since they were only the word element ‘sport’ was identical and that their distinctive elements – the figurative element of the applied-for mark and the alphanumeric element ‘k2’ of the earlier marks – had no common characteristics.
The court agreed that the word ‘sport’ was not strong enough to cause a likelihood of confusion between the marks. It added that the appeals board correctly found that the overall impression created by the marks was different.
Chris McLeod, director of trademarks at law firm Squire Sanders, said he was unsurprised by the ruling.
“Though K2 Sports argued that the initial, figurative part of the applied-for mark was a k, it is not clear to me that that is the case.”
He added: “I’m not sure I would have taken this to the second level of appeal – there was not much to go on. I would be surprised if this case went any further. The CJEU [which K2 could appeal to] is expensive. ”
