Similarity of Union figurative marks was decided yesterday by the European Court in the sense of the earlier figurative mark “OO”. Both marks had only a short but identical word element.
The earlier EU figurative mark OO of the intervener Oofos, Inc. (USA) stands for regeneration shoes, with special damping sole, which is marketed under OOFOAM™ When Alessandro Biasotto (Italy) filed an application for an EU figurative mark OO with a horizontal line in the second O, Oofos Inc. filed an opposition against registration of the mark applied for in respect of the goods in Nice Class 25 – in particular the goods ‘clothing’ and ‘shoes; shoe soles; foam upholstery as part of shoes’.
The Opposition Division rejected the opposition and the subsequently appealed Board of Appeal of the EUIPO annulled this decision and upheld the opposition. Alessandro Biasotto brought an action against that decision.
Yesterday, the CJEU had to decide whether the two marks in dispute could be regarded as sufficiently similar for the goods in class 25: visually, phonetically and conceptually.
The trademark owner VW lost a similar case with its older union figurative mark VW against the union figurative mark MAIN AUTO WHEELS, please read the whole article HERE.
Common word element “OO” is dominant
Visually, the Board of Appeal concluded that the respective lines in the marks at issue and the difference in colour were not sufficient to rule out the similarity between the signs. This decision was confirmed today by the CJEU.
According to settled case-law, assessing the similarity between two marks means taking more than just one component of a composite mark and comparing it with another mark. On the contrary, the Court recalled that the comparison must be made by examining each of the marks in question as a whole.
The common word element ‘OO’, which is recognisable and identifiable in both marks, must be regarded as distinctive and dominant in relation to the figurative elements of the marks. Although the slightly oval shape of the letters ‘o’ and a horizontal line in the second ‘o’ are not insignificant, the Court found, they are perceived as secondary stylistic decorative elements which are not sufficient to make the marks distinctive.
Phonetically identical marks
Phonetically, that is to say phonetically, the two marks are even identical, since only the common verbal element ‘oo’ can be reproduced verbally. The applicant Biasotto had argued that phonetic similarity was not possible since they were figurative marks. But this was rejected by the CJEU. The Court stated that the word elements of a word and figurative mark are, in principle, more distinctive than the figurative elements, since consumers like to refer to goods which they can cite.
Insufficient differences – even in the case of short marks
The CFI also pointed out that some differences are insufficient even for short marks if they do not lead to a visual difference that distinguishes the signs. That is the case here. Conceptually, on the other hand, the two marks had no meaning and would be perceived by the relevant public as imaginative concepts, the CFI stated.
Second proceedings also decided
In a second proceeding between the same parties, also decided yesterday before the European Court, the CJEU also dismissed the claim. The plaintiff Alessandro Biasotto had also applied for an Union figurative trademark “OOF”. In opposition to this trademark registration, intervener Oofos, Inc. invoked its own earlier Union word mark OOFOS.
According to case law, the protection of a word mark concerns the word mentioned in the application for registration and not the particular graphic or stylistic elements that the mark might have, the CJEU explained. The fact that the mark applied for is a figurative mark does not affect the protection of the earlier word mark. The Court also referred to the principles of interdependence and imperfect memory – in short, a likelihood of confusion due to the fact that consumers do not remember exactly a trademark.
Likelihood of confusion between marks
Given the average degree of visual and phonetic similarity between the marks in question and the at least average degree of similarity between the goods in question, taking into account the overall assessment of all factors and the interdependence, the CJEU held that the Board of Appeal was right to find that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 in respect of both of the applicant’s trademark applications. Both actions brought by Alessandro Biasotto were dismissed by CJEU.
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