Legal Updates - Distinctive and Dominant Components

Intellectual Property Law – Community Trade Mark – Distinctive and Dominant Components – Likelihood of Confusion

The case of Honda Motor Europe Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2008] involved an opposition against a community trade mark and a determination on the operation of distinctive and dominant components. On the 10 December 2001, the applicant company filed an application to register a Community Trade Mark “MAGIC SEAT” in respect of Class 12 in respect of “Vehicle seats and vehicle seat mechanisms and parts and fittings and accessories for these goods”. at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (“OHIM”).

On the 7October 2002, the respondent company filed a notice of opposition against the registration as sought by the applicant company. The opposition was principally based on the Spanish figurative mark No 2189822, which was registered on 3 March 1999. The Spanish mark was registered in respect of the following goods in Class 12 “Land vehicles, coupling and transmission components as well as other components and spare parts for land vehicles not belonging to other classes; apparatus for locomotion by land, air or water”.

One of the grounds relied on in support of the opposition was the ‘likelihood of confusion’ between the trade mark applied for and the earlier mark. Furthermore, the respondent also relied on the reputation of its trade mark, particularly in Spain.

The Opposition Division of OHIM upheld the opposition on the grounds that there was a likelihood of confusion between the trade mark applied for and the earlier Spanish mark, specifically in respect of the identity of the goods and the similarity of the conflicting marks. Additionally, it was held that it was not necessary to examine the enhanced distinctive character of the earlier trade mark.

Subsequently, on 5 August 2005, the applicant lodged an appeal with OHIM against that decision. The First Board of Appeal decided on 7 September 2006 (“the Contested Decision”) to dismiss the appeal due to the fact that there was a likelihood of confusion between the trade mark applied for and the earlier mark, as the goods in Class 12 covered by the opposing signs were identical. In addition, the conflicting marks were held to be similar at visual and aural levels, and that they risked being perceived as similar at a conceptual level.

Furthermore, the First Board of Appeal was also of the opinion that the earlier Spanish mark had a highly distinctive character in Spain due to its reputation. Therefore, even if consumers did not confuse the two marks and noticed the differences between them, there was a risk that consumers would associate them in believing that their common commercial origin was the same.

The applicant then appealed to the Court of First Instance. The applicant sought an annulment of the Contested Decision. The court held as follows:

In accordance with Article 8(1)(b) of Regulation 40/94, in the event that a proprietor of an earlier mark registers an opposition to the application of a new trade mark, the new trade mark should not to be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the marks, there existed a likelihood of confusion on the part of the public in the territory in which the earlier trade mark was protected. The court further held that the likelihood of confusion included the likelihood of association between the two marks.

The court also stated that under Article 8(2)(a)(ii) of Regulation 40/94, “earlier trade marks” should mean trade marks that are registered in a member state with a date of application for registration which was earlier than the date of application for registration of the new trade mark.

The case law that was relied on in reaching this decision states that the risk of the public believing that the goods or services in question came from the same undertaking or from economically-linked undertakings constituted a likelihood of confusion. The likelihood of confusion should be assessed globally and should take into consideration any relevant circumstances of the case, particularly any similarity between the trade marks and between the goods or services attributable to those marks.

The assessment of the likelihood of confusion in respect of the visual, aural or conceptual similarities should be based on the overall impression given by the marks. Special consideration should be made of the marks’ distinctive and dominant components.

In this case, the conflicting marks appeared to be similar overall. The similarity resulted from the reproduction of the dominant component of the earlier trade mark “SEAT” in the trade mark for which registration was sought. Since there was no conceptual difference between the two conflicting marks capable of counteracting their similarities on the visual and aural levels, the applicant's argument that the Board of Appeal had failed to apply the rule of counteraction was rejected.

Furthermore, it was held that the earlier Spanish trade mark had a highly distinctive character in Spain due to its reputation. This meant that it enjoyed a greater protection than those marks with a less distinctive character. Accordingly, there was a likelihood that the relevant public might believe that the goods in question came from the same commercial origin.

Therefore, the Board of Appeal was correct in holding that there was a likelihood of confusion on the part of the relevant public. The action was dismissed.

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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.


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