Intellectual Property – Intellectual Property Law – Trademark Registration – Trade Marks – Trademark
In Icebreaker Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) [2010] Case T-112/09, the trade marks were regarded as similar and therefore a likelihood of confusion between the trade marks.
Back in 2003, Icebreaker filed a Community Trade Mark (CTM) application for the trade mark ICEBREAKER. The intervener in 2004, Gilmar SpA, opposed the based on a number of earlier national and international registrations of the trade marks ICE and ICEBERG.
The Opposition Division of OHIM in 2007 partially upheld the opposition on the grounds that evidence of genuine use had been provided for the earlier trade marks ICEBERG and ICE. Therefore, there was a likelihood of confusion between those earlier marks and the mark ICEBREAKER for which registration was sought in respect of those goods.
Icebreaker appealed on the basis that arts 8(1)(b) and (5) of the Council Regulation (EC) 40/94 (on the Community trade mark) had been infringed. The Fourth Board of Appeal dismissed the appeal and upheld the Opposition Division's decision on the grounds that there was a likelihood of confusion existed within the meaning of art 8(1)(b) of the Regulation in relation to the trade mark ICEBERG.
Icebreaker appealed on the basis that the Board of Appeal wrongly concluded that there was a likelihood of confusion between the trade marks.
The appeal was dismissed:-
· An assessment of the likelihood of confusion implied some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between those goods or services might have been offset by a high degree of similarity between the marks, and vice versa. In addition, the assessment of the likelihood of confusion depended on numerous elements and, in particular, on the public's recognition of the trade mark on the market in question. The more distinctive the earlier mark, the greater would be the likelihood of confusion and therefore marks with highly distinctive character, whether per se or because of the recognition they possessed on the market, enjoyed a broader protection that marks with a less distinctive character .
· On the evidence, the signs at issue had to be regarded as similar within the meaning of art 8(1)(b) of the Regulation. Given the similarity of the signs at issue, the Board of Appeal rightly held in the contested decision that, when they were examined together, the similarities between the marks at issue, associated with the distinctive character of the earlier mark on the Italian market were sufficient to conclude that there was a likelihood of confusion between those 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.
