Legal Updates

Intellectual Property Law – Community Trade Mark – Likelihood of Confusion – Opposition

The recent case of Shaker Di L. Laudato & C. Sas v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) [2008] involved a dispute over a Community trade mark. Article 8 of Council Regulation (EC) 40/94, so far as is relevant, provides as follows:

“(1) Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered: ...

(b) 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 trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.”

The applicant in this case filed an application for the registration of a Community trade mark with the respondent Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) in October 1999. The application was made under Council Regulation (EC) 40/94 (on the Community trade mark) (“the Regulation”).

The application was for the registration of the mark was the figurative mark “LIMONCELLO”. Subsequent to the application, in June 2000, a notice of opposition against the registration of LIMONCELLO was filed. The opposition was filed in accordance with Article 8(1)(b) of the Regulation.

The argument that was made on the opposition was that the mark LIMONCELLO conflicted with the mark LIMONCHELO. The mark LIMONCHELO had already been applied to be registered by a company in Spain.

Then, in September 2002, the respondent's Opposition Division upheld the opposition to the mark. The applicant therefore duly brought an appeal against the decision. The matter eventually was brought before the respondent's Second Board of Appeal (“the Board”).

The Board came to a decision on the 24th of October 2003 whereby the appeal was dismissed (“the Contested Decision”). The Board made the following statement:

“…Having regard to the similarity of the marks at issue and the congruence of the goods in question there was a risk that Spanish consumers might confuse or associate their commercial origin”.

The applicant in this case subsequently commenced an action seeking an annulment of the Contested Decision in the Court of First Instance. Three pleas were submitted by the applicant. The applicant alleged:

§   Infringement of Article 8(1)(b) of the Regulation;

§   Misuse of powers; and

§   Breach of the duty to give reasons.

The court held that the finding of the Board had been legitimate. The court was of the opinion words 'LIMONCELLO' and 'LIMONCELO' were indeed similar and as such created a likelihood of confusion on the part of the relevant public. Furthermore, it was held that there was no evidence of error of assessment or misuse of powers. This meant that the Contested Decision would not be annulled. In arriving at the Contested Decision it was found that the facts and legal considerations had been appropriately considered when dismissing the appeal against the finding of the Opposition Division. Therefore, the three pleas were dismissed, and the action was not taken any further.

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© RT COOPERS, 2009. 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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