Intellectual Property Law – IP Lawyers - Trade Mark Law – Trade Mark Lawyers - Trade Mark Protection - Likelihood of Confusion – Contested Decision
The recent case of Coin SpA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2010] involved a determination relating to likelihood of confusion in respect of a trade mark. On the 27th of April 2004, the company Dynamiki Zoi AE made an application for registration of a Community trade mark. The mark for which registration was sought was the word mark “FITCOIN” for goods and services in Classes 16, 25, 28, 35, 36 and 41.
Subsequently, on the 30th of December 2005, the applicant in this case, Coin SpA, gave notice of opposition to the trade mark registration in respect of all the goods and services covered in the application. It should be noted that the opposition was based on a number of earlier, national, international and Community figurative marks “COIN”.
The grounds which were relied on for the opposition were detailed in Article 8(1)(b) of Regulation 40/94 (now art 8(1)(b) of Regulation 207/2009).
The Opposition Division rejected the opposition.
The Opposition Division held that even in the event that the goods and services covered by the application were identical and/or similar to those covered by the mark “COIN”, the marks themselves were sufficiently dissimilar visually and phonetically and, conceptually, they had no meaning.
It concluded that any likelihood of confusion was excluded.
The applicant duly filed an appeal with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (“OHIM”) against the decision. The applicant claimed that there was indeed a likelihood of confusion on the part of the public throughout the territories to which the earlier rights extended:
”Italy, Benelux, Germany, Spain, France, Hungary, Austria, Portugal, Slovenia, as well as the entire European Community”.
A decision was reached on the 15th of April 2008 (“the Contested Decision”). It was held in the Contested Decision made by the OHIM Board of Appeal that the appeal should be dismissed due to the fact that the relevant public was the Italian general public, which had a varying degree of attentiveness.
It was held by the OHIM Board of Appeal that the goods and services in respect of which registration of the mark FITCOIN was sought were identical to those goods and services covered by the majority of the earlier registrations.
When the two conflicting signs were compared, it was held that there was a low degree of visual similarity and a substantial phonetic difference. Furthermore, a conceptual comparison of the signs was not possible due to the fact that the words ”coin” and ”fit” had no meaning for the majority of Italian consumers.
Accordingly, the OHIM Board of Appeal reached the conclusion that if the conflicting signs were assessed globally they were not similar and therefore there was no likelihood of confusion within the ambit of Article 8(1)(b) of Regulation 40/94.
Subsequent to this decision, the applicant duly lodged an appeal against the Contested Decision with the General Court of the European Union.
In it’s appeal the applicant raised a single plea alleging the breach of Article 8(1)(b) of Regulation 40/94.
The Court held that it was well established that the risk the public may believe the goods or services in question originated from the same (or economically-linked) undertaking amounted to a likelihood of confusion. Furthermore, the likelihood of confusion had to be:
§ Assessed globally;
§ Assessed according to the perception which the relevant public had of the signs and the goods or services in question; and
§ Assessed taking into consideration all factors relevant to the circumstances of the case, paying particular attention to the interdependence of the similarity between the signs and between the goods or services as identified.
It was held that the OHIM Board of Appeal had been erroneous in reaching the conclusion that there was no likelihood of confusion. It had elected to confine itself to an analysis of the similarity of the signs and the likelihood of confusion in relation solely to the Italian public. It did not take into consideration:
§ The average consumer in the European Union regarding Classes 16, 25, 28 and 35;
§ The average consumer in Germany, Spain, Hungary and Slovenia regarding Class 36; and
§ The average consumer in Germany, Hungary and Slovenia regarding Class 41.
Therefore, by taking into consideration only earlier Italian marks and by reaching the decision that there was no likelihood of confusion on that basis alone, the OHIM Board of Appeal had indeed breached Article 8(1)(b) of Regulation 40/94. As a result, the single plea raised by the applicant would be upheld, which meant that the Contested Decision was deemed annulled.
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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.
