Intellectual Property – Trade Mark – Trade Marks – Trademarks – Trademark Law – Opposition
In the case of CM Capital Markets Holding, SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Carbon Capital Markets Ltd intervening)[2010], the court held that despite the identical services, there was no likelihood of confusion between the marks.
The intervener, Carbon Capital Markets Ltd, filed a Community Trade Mark application (“CTM”) on 9 June 2005, for a figurative sign in respect of 'Financial services; commodity trading; commodities brokerage; commodities finance; commodities investment services; services relating to the trading of commodities; provision of pricing information of commodities; capital investments; investment services; services relating to emissions allowance trading; options trading; trading in emissions allowances; trading in equities; trading in stocks; commodities brokerage; risk management services; financing of acquisitions; information, advisory and consultancy services relating to emissions trading' in class 36.
The CTM application was subsequently published in December 2005. On 10 March 2006, the applicant, CM Capital Markets Holding SA, filed an opposition to the CTM application on the grounds that (i) the two registrations of the blue and grey figurative sign ('the earlier marks') were already registered and covering services in Classes 35, 36 and 42 including the Spanish trade mark No 2381503 registered in 2001, in respect of ‘Financial and exchange services'..
On 30 October 2007, OHIM held that there was no likelihood of confusion between the trade marks.
On 17 December, the applicant appealed against the decision but the First Board of Appeal of OHIM dismissed this appeal. It held that whilst the services covered by the trade marks were 'essentially the same', the trade marks did not have a sufficient degree of similarity for there to be a likelihood of confusion between them, taking into account the fact that the expression 'capital markets' was generic for services in the financial sector, the inherently low distinctive character of the earlier marks and the fact that the relevant public was highly attentive and well informed.
The applicant appealed to the court on the basis that the Board of Appeal erred in their decision that there was no likelihood of confusion between the trade marks as the services covered by the marks at issue were identical and the marks at issue were 'nearly identical'.
The Court held:
· It is trite law that the public might be confused into believing that the goods or services come from the same undertaking or from economically-linked undertakings. This likelihood of confusion had to be assessed globally, according to the relevant public's perception of the signs and goods or services concerned and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated.
· Therefore, the relevant public meant consumers throughout the whole Community who were very attentive, well informed and familiar with basic English financial terminology.
· The trade marks were different - the overall impression conveyed by the trade marks, the visual and conceptual differences between them were sufficient to outweigh their limited phonetic similarity, as the relevant public was highly attentive and well informed.
· Considering the lack of similarity between the trade marks, the Board of Appeal was right to find that, despite the services covered being identical, there was no likelihood of direct confusion between the trade mark applied for and the earlier marks. The fact that the designated services were identical could not, in the global assessment of the likelihood of confusion, compensate for the lack of similarity between the trade marks.
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© RT COOPERS, 2010. 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.
