Monday, 2 May 2011

April Community trade mark cases in the General Court

Not all of them - but this selection might be interesting and useful ... some not reported anywhere else I can find.

Relative grounds

In Case T-84/08, Intesa Sanpaolo SpA v OHIM, COMIT and COMET 7 April 2011 likelihood of confusion between the word mark COMIT, applied for in relation to services in classes 35, 36, 41 and 42 and the earlier figurative mark "Comet" registered in Germany for services in the same classes. The marks were similar phonetically and visually and the figurative differences too slight and do not alter impression of similarity between the almost identical words which are the dominant elements. Conceptually, there are differences. ‘Comet’ would be understood as ‘komet’ by the German public so there was a little distinctiveness, but the common prefix ‘com’, denoting 'commerce' or 'commercial', is a widely-used abbreviation in the world of business. The Court concluded that as the marks shared the same prefix the conceptual differences were insufficient to cancel out the visual and phonetic similarities.

In Case T-466/08, Lancôme v OHIM, ACNO FOCUS and FOCUS word marks 14 April 2011 the General Court upheld a Board of Appeal decision that there was a likelihood of confusion for the German public between the word mark ACNO FOCUS applied for in relation to goods in class 3 (‘Cosmetic and make-up preparations’) and the earlier German word mark FOCUS registered for identical goods. ‘Acno’ is very close to the German word ‘akne’, which alluded to the characteristics of the goods, and the German consumer of such goods would perceive ACNO FOCUS to be a name under which the opponent was marketing a new line of products for treating acne

In Case T-358/09, Sociedad Agricola Requingua v OHIM, TORO DE PIEDRA word mark and "Toro" figurative mark, 13 April 2011 the General Court found there was a likelihood of confusion between the word mark TORO DE PIEDRA of the Chilean applicant for alcoholic beverages including wine, and an earlier figurative mark which included the word "Toro" (the place in Spain rather than the animal) registered for wines.
In Case T-228/09, United States Polo Association v OHIM, U.S. POLO ASSN and CTM POLO-POLO, 13 April 2011 the General Court found that there was likelihood of confusion between the word mark U.S. POLO ASSN and the earlier CTM, POLO-POLO, for textiles in class 24. The Board of Appeal’s finding that the goods were identical was not contested. The contention that the Board had found similarity between the marks only because it assumed that POLO was the dominant element of the applicant’s mark was, the court said, wrong – the Board had said that given imperfect recollection the public would be likely to be confused by the common element. The Board had found a “medium degree” of phonetic similarity, and the Court upheld this finding. The applicant argued that “u.s.” and “assn” were not descriptive of the goods – but that court pointed out that that didn’t mean they were automatically distinctive. There was a medium degree of conceptual similarity too. The low degree of attention paid by consumers when buying goods of this type led to the conclusion that there was a likelihood of confusion.

In Case T-209/09, Alder Capital Ltd v OHIM, 13 April 2011 the General Court upheld a decision of the OHIM Board of Appeal which declared the word mark ALDER CAPITAL invalid on the grounds of conflict with the earlier marks HALDER and HALDER INVESTMENTS. The Board had correctly found a high degree of similarity between the marks and a medium degree of similarity between the services. Even though the attention paid by the public to the marks would be high, there was a likelihood of confusion.

Case T-433/09, TTNB v OHMI (14 April 2011) - word mark Tila March v national figurative mark CARMEN MARCH for goods in classes 3 (bleaching preparations etc), 18 (leather goods) and 25 (clothing, footwear and headgear). The court concluded that given the identity of the products concerned, the small amount of attention of the relevant public and similarities between the conflicting signs especially the distinctive element common, the differences were not sufficient to eliminate any risk of confusion between the marks.

Absolute grounds

In Case T-262/09, Safariland LLC v OHIM, FIRST DEFENSE AEROSOL PEPPER PROJECTOR, 13 April 2011 the General Court dismissed an appeal against the refusal of a Community trade mark opposition based on the ground that the applicant was agent for the true rights-owner and did not have consent or justification to register the CTM. The facts are somewhat unusual in that the case had already been to the Court of First Instance a few years ago, there had been a change in the ownership of the opponent’s business and the key question was whether a consent had survived the business transfer.

In Case T-523/09, Smart Technologies v OHIM, 13 April 2011 the General Court dismissed an appeal against a finding that the word mark WIR MACHEN DAS BESONDERE EINFACH (“we make the special simple”) applied for in respect of goods in class 9 should be refused registration because it was devoid of distinctive character . It was merely an advertising slogan.

In Cases T-310/09 and T-383/09, Fuller & Thaler Asset Management Inc v OHIM, 12 April 2011 the General Court dismissed appeals against OHIM Board of Appeal findings that the word marks BEHAVIOURAL INDEXING and BEHAVIOURAL INDEX were an “immediate, direct and easily understandable indication of the nature and intended purpose of the goods and services” in Classes 9 and 36. The “juxtaposition is neither novel nor imaginative in the sphere of software and finance”, and it is well-known that “such a psychological analysis of human, social and cognitive factors may be carried out in the financial sector with a view to understanding, explaining, interpreting or predicting decisions made by consumers, borrowers, managers or investors, which affect stock market prices, returns and the allocation of resources”.

Case T-12/09 RUN THE GLOBE (7 April 2011) available only in French and German. The trade mark was mercifully held to be descriptive or organising sporting events, though on the slightly unlikely grounds that consumers would imagine that the purpose of the events was to circumnavigate the globe.

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