Intellectual Property Law – Community Trade Mark – Conceptual and Phonetic Differences
The case of Hoya Kabushiki Kaisha v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Case T-9/05) [2007] concerned an applicant who filed an application for a Community Trade Mark for the word ‘AMPLITUDE’ in respect of Eyeglasses; lenses for eyeglasses; frames for eyeglasses; sunglasses; contact lenses. The application was subsequently published.
The intervener in this case lodged an opposition to the registration. The opposition was made on the grounds that a mark, which was a turquoise-blue coloured figurative mark reading ‘AMPLY’, had been registered in Spain in respect of goods in Class 9. The Spanish mark was in respect of Optical apparatus and instruments, in particular spectacles and sunglasses, sun lenses and ophthalmic lenses..
The Opposition Division of OHIM rejected the opposition. The rejection was made on the basis that there was no likelihood of confusion between the two marks, for the purposes of Council Regulation (EC) 40/94 (on the Community trade mark) (“the Regulation”).
The intervener then filed an appeal against that decision.
The First Board of Appeal held that there was a likelihood of confusion, and so the applicant subsequently appealed. The applicant submitted that the Board had been mistaken in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of the Regulation.
The court ruled that according to Article 8(1)(b) of the Regulation, when an opposition by the proprietor of an earlier trade mark was made, a mark applied for was not to be registered if there existed a likelihood of confusion on the part of the public in the territory in which the earlier mark was protected due to:
§ Its identity with (or similarity to) the earlier trade mark; and
§ The identity or similarity of the goods or services covered by the earlier trade mark.
It was held:
§ That the risk that the public might believe that goods or services came from the same undertaking (or related undertakings) constituted a likelihood of confusion.
§ The likelihood of confusion had to be assessed globally.
§ The perception of the relevant public of the goods or services in question had to be considered.
§ All factors relevant to the circumstances of the case had to be taken into account.
§ The consumer's level of attention was likely to vary depending on the category of goods or services in question, and that the likelihood of confusion had to be based on the overall impression conveyed by the marks by their distinctive and dominant components.
§ This meant that in this case, for the purposes of assessing the likelihood of confusion, account had to be taken of the fact that the goods covered by the marks were identical. Account also had to be taken of the point of the view of the average Spanish consumer with an average level of attention.
§ The Board had correctly found that the marks were visually, phonetically and conceptually similar with regards to the common root of each word, namely 'AMPLY/AMPLI'.
§ Despite certain differences in each mark, there was also an overall visual similarity between the two marks.
§ In relation to the phonetic similarity of the first syllables of the marks, this was offset by the slightly different pronunciation in Spanish. There was also a great conceptual similarity on account of the strong link between the goods concerned, as well as the meaning attached to the marks by the relevant consumers. In such circumstances, the overall visual similarity and the strong conceptual similarity, when considered with the phonetic similarity, meant that a general assessment that the signs were similar should be made. As a result, the Board's overall assessment that the conflicting signs were similar was correct and so it was deemed that it had not been erroneous in concluding that there was a likelihood of confusion between the two marks.
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© RT COOPERS, 2008. 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.
