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    CTM Opposition Division Decisions

    Phonetic confusion enough to establish similarity of marks

    Two recent oppositions have confirmed that the establishment of a phonetic similarity between two marks, in the absence of a visual or conceptual similarity, may be enough to win a CTM opposition.

    In the first opposition (Caja de Ahorros v Günther Brinek), a CTM application for the trade mark Kay in classes 9, 16, 28 and 41 was opposed on the basis of a Spanish trade mark registration for CAI covering entertainment services. The Opposition Division found that, to a Spanish consumer, the two marks were visually dissimilar and that neither mark would have any conceptual meaning. However, by contrast, the marks were phonetically identical to a Spanish speaker and this phonetic identity outweighed the other factors. The CTM application was therefore rejected for a variety of the class 9 and 41 goods and services claimed.

    In a similar case involving a prior Spanish registration, the CTM application was for Veramonte and covered wine, whilst the opponent’s registration protected the trade mark Bodegas Beamonte in respect of wine. Once again the two trade marks were found to be visually dissimilar. In this opposition, the marks were also regarded as conceptually dissimilar despite the common presence of the suffix -monte (the Spanish for mountain). That left the phonetic comparison and because Spaniards pronounce the letter v at the beginning of a word as the letter b, the two marks were found to possess a high degree of phonetic similarity. When this was combined with the identity of the goods being compared, it led the Opposition Division to conclude that a likelihood of confusion existed in Spain.

     

    The Importance of Language When Comparing Marks

    In this opposition (La City v Skechers USA), the CTM application claimed Sity By Skechers in relation to class 25 goods. This was opposed by a French registration for LA CITY covering identical goods.

    Given that the opponent’s prior right was a French registration, the Opposition Division assumed that the earlier mark was LA (French for THE) CITY rather than LA (abbreviation for Los Angeles) CITY and that therefore the dominant element of this mark was the word CITY. They then analysed the CTM mark and concluded that Sity was its principal feature. On this basis and since the French public would pronounce Sity in the same way as City, the Opposition Division found the two marks to be similar and therefore rejected the CTM application.

     

    Comment

    These three oppositions illustrate the problems that the numerous European Union languages pose a trade mark owner (and his advisor) attempting to clear a trade mark for registration and use throughout the EU. These problems will certainly not be reduced when ten new States join the EU in 2004.

    It is difficult for the present writer to accept that any of the above sets of marks are in fact confusingly similar. It is believed that in all cases the visual differences between the marks would overwhelm any possibility of phonetic confusion. Whilst not falling into the Pash/Bass class (see Pash Textilvertrieb v Philips Van-Heusen, where it was found that lisping Germans would confuse these two marks), it is still submitted that all of these oppositions were incorrectly decided.

     

    Comparison of Names

    Three recently decided oppositions offer some guidance on the comparison of trade marks which consist of or contain names.

    In Alexander Creation de Luxe v Autumnpaper, the CTM application was for the mark Alexander McQueen in Classes 18, 24 and 25. It was opposed on the basis of a German registration for Alexander and Crown device in class 25. The Opposition Division decided that the two marks were not confusingly similar because Alexander was a common German first name and surname, McQueen would be seen as an unusual (to Germans) English (sic) surname and more attention is generally paid to surnames than first names. On this basis the opposition was dismissed.

    In the second opposition (Paul Green v Mary Green Enterprises), a CTM application for Mary Green covering, amongst other goods footwear, was opposed by the owner of an earlier CTM for Paul Green registered for footwear.

    Because Green is said to be an unusual surname in EU countries other than Ireland and the UK, the Opposition Division concluded that it would be seen as the dominant element in both marks. Further, in these countries (that is those other than Ireland and the UK), Mary Green footwear could be seen as a female line extension of Paul Green products. For this reason a likelihood of confusion was found and the CTM application was rejected.

    The Opposition Division noted with approval an earlier Appeal Board decision where Spanish consumers were found likely to confuse the marks Ted Baker and Claudia Baker. Not surprisingly, an earlier Opposition Division decision in which the marks John Smith and Paul Smith were found to be distinguishable was deemed to have no relevance since “each case must be considered on its own facts”.

    The final case (Schott Bros v Scott Sports), involved a CTM application for Scott USA in respect of goods in classes 9, 12, 25 and 28. The opponent’s principal ground of opposition was based on a CTM registration for Rose Schott covering class 25 goods.

    As in the Paul Green case above, the Opposition Division decided that the primary distinctive features of the two marks were the surnames Scott and Schott. They then proceeded to conclude that these two names were confusingly similar. It followed, in the view of the Opposition Division, that because of the identity of the class 25 goods claimed, the CTM application should be rejected for these (class 25) goods.

     

    Comment

    In the writer’s opinion, both the Paul Green/Mary Green and the Rose Schott/Scott USA oppositions were incorrectly decided. Distinguishing between names is part of every day life. Everybody does it everywhere, not just in Ireland and the UK. Why this ability should not also apply when names become trade marks is not immediately apparent.

    In the above decisions, the Opposition Divisions are essentially giving the two opponents de facto trade mark monopolies in the surnames Green and Schott (and in the latter case surnames said to be similar to Schott). However, they do not own such monopolies. They own the marks Paul Green and Rose Schott respectively. Any reasonably circumspect EU consumer should be able to distinguish between Mary Green and Paul Green and between Rose Schott and Scott USA without any difficulty whatsoever.

    Unfortunately, we have to live in the world as it is rather than the world as it should be. In this rather odd, OHIM created world, it should be assumed that a later CTM mark which features the same or a very similar surname to a prior EU registered mark will probably be rejected in an opposition based on that prior registration. If this is indeed OHIM’s practice, it should be changed and brought into line with the much more sensible John Smith/Paul Smith opposition decision.