Legal Updates

Intellectual Property Law – European Trade Marks – Opposition to Registration of Trade Mark – Visual Phonetic and Conceptual Comparison

The case of Castellani SpA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Case T-149/06) [2007], concerned an opposition of a European Community trade mark. On the 25th of September 2001, the applicant filed an application to register a Community Trade Mark. The application was made to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), and was carried out under Council Regulation (EC) No 40/94 (on the Community Trade Mark).

The applicant sought registration for the figurative mark ‘CASTELLANI’. On the 4th of September 2002, a company called Markant filed a notice of opposition to registration of the trade mark on the grounds of a earlier registration. The company had registered the word ‘CASTELLUCA’.

The opposition referred to all the goods covered by the earlier registrations and was directed against all the goods in respect of which registration was sought -  the likelihood of confusion on the part of the public due to the similarity between the earlier trade mark and the trade mark sought and the goods in question.

The Opposition Division of OHIM rejected the opposition in its entirety.

Once the mark was considered, it was decided that the trade mark applied for and the earlier mark were visually, as well as phonetically dissimilar. Furthermore, the relevant public would not perceive any conceptual similarity between the marks in dispute.

The opponent appealed against this decision to the Opposition Division. The First Board of Appeal of OHIM annulled this decision of the Opposition Division and rejected the application for registration, finding that there was a likelihood of confusion between the trade mark ‘CASTELLANI’ and the earlier trade mark ‘CASTELLUCA’. However, the applicant appealed, claiming that the Court of First Instance should annul the contested decision. The applicant alleged a single plea of infringement of Article 8(1)(b) of Regulation 40/94.

The Court held that when making an overall assessment of the marks at issue the visual, phonetic, and conceptual differences between the conflicting signs were sufficient, despite the identical nature of the goods covered, to preclude the resemblances between them giving rise to a likelihood of confusion on the part of the average German consumer.

If was decided that the likelihood of confusion had to be assessed globally. Such assessment had to be made according to the perception of the relevant public of the signs and the goods or services in question. Furthermore, the assessment had to take into account all factors relevant to the circumstances of the case, in particular, the interdependence of the similarity between the signs and between the goods and/or services designated.

The global assessment of the likelihood of confusion, as far as it concerned the visual, aural or conceptual similarity of the signs in question, had to be based on the overall impression given by the signs, taking into consideration their distinctive and dominant components.

In this case, the court found that it was clear that the figurative elements of the mark in question would be perceived as an illustration of a castle. In the overall visual assessment of the signs, the difference established between the word elements of ‘CASTELLANI’ and ‘CASTELLUCA’ was sufficient to rule out any visual similarity between the competing signs.

With regards to the phonetic comparison, the dissimilarities between the signs, due to the differences between the suffixes, were sufficient for them to be distinguished aurally in German despite the fact that the prefixes were the same.

With regards to the conceptual comparison, the court felt that the average German consumer was unlikely to associate the two marks in the same way as with the word 'Kastell', so that the competing signs were conceptually similar. However, the court also felt that the average German consumer was used to seeing a large number of trade marks for wine whose names had the prefix 'castel' which would mean that the average consumer would attach less significance to the prefix and closely examine the suffix.

Accordingly, the court decided that there was a conceptual difference between the two signs. As a result, the single plea raised by the applicant had to be upheld and the contested decision was annulled.

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© RT COOPERS, 2007. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.

 

 

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