Ikea Furnishes Uncomfortable Outcome

Swedish furniture giant Ikea suffered a blow in January, when the CFI upheld a CTM for an IDEA Logo for furniture in the face of the well-known IKEA mark (Case T-112/06, Inter-Ikea Systems BV v OHIM). The decision underlines the often subjective nature of the comparison between word and composite marks, and reinforces the need for caution when weighing conflicts between them.

Getting the Idea

Ikea owned a CTM and national registrations for the IKEA word and IKEA against a white roundel, surrounded by a black rectangle. The registrations covered furniture.

Based on these, IKEA applied to cancel a later CTM for IDEA Logo of Walter Waibel, in which the word appeared inside white cubes making up a rectangle, with the top left corner shaded in and tipped up away from the rest of the cubes. Waibel also claimed furniture.

Ikea argued that the marks were similar and that, taking account of its international reputation, there was a likelihood of confusion between the IDEA Logo and the IKEA marks. It asserted that the words IKEA and IDEA were dominant in the composite marks, in particular, and that the marks were visually and aurally similar.

Tables Are Turned

The Cancellation Division found for Ikea, but Ikea’s victory was short-lived. The Board of Appeal overturned it, holding that the IDEA Logo was visually and conceptually different to the IKEA marks.

Any aural similarities were likely to be inconsequential since furniture purchases were normally made visually. The Board took into account that furniture tended to be expensive and the average consumer took time and care over such purchases.

Ikea appealed to the Court of First Instance, which handed down its judgment in January. In it, the Court rebuffed Ikea’s arguments and upheld the BoA.

It held, first, that the BoA had been right to regard the attention span of the average furniture consumer as relatively high. Even if not all furniture is expensive (Ikea’s furniture in particular was often aimed at modest budgets) and a purchase can be made quickly, nonetheless the average consumer typically takes time to consider whether the item will fit in with existing furnishings and décor. Moreover, furniture is not something that a consumer buys every day. Unusual purchases tend to involve a greater level of attention than normal (see also Case T-147/03 Devinlec v OHIM, TIME ART (QUANTUM) [2006] ECR II-11, para. 63).

On the comparison of marks, the CFI noted that a complex mark and another mark that is identical or similar to one of its components will not be regarded as similar overall unless the shared element is dominant in the complex mark. Such dominance is likely where the shared component dominates the image of the complex mark in the public mind, such that the other components are negligible in the overall impression (Case T-6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II-4335, para. 33).

The CFI observed that in a composite mark, the word element is not necessarily dominant (Case T-3/04, Simonds Farsons Cisk v OHIM – Spa Monopole [2005] ECR II-4837, para. 45). In this case, the CFI found that the word IDEA was not the dominant element in the later mark, despite its visual prominence, since IDEA was an “international expression” with similar equivalents in almost all E.U. languages. Its distinctiveness was therefore low by comparison with what the Court regarded as an “unusual” and intrinsically distinctive figurative device of cubes.

The word element appeared within the cubes in the centre and was therefore dependent on the figurative device. The CFI regarded the cubes as being at least as important as the word IDEA in the overall representation.

Despite the clear similarities between the IKEA and IDEA words, the CFI regarded the figurative elements of the IDEA Logo as sufficient to avoid visual similarity, even between the IDEA Logo and the IKEA word mark.

The CFI acknowledged some aural similarity, but considered it minimal because of the different sounds produced by the consonants “d” and “k”.

Finally, the CFI upheld the BoA’s finding that the marks were conceptually different. “Idea” was a basic English word that was likely to be understood throughout the E.U., whereas IKEA was a coined word with no meaning other than to denote the appellant. Accordingly, applying Mühlens v OHIM – Zirh International (ZIRH) (Case T-355/02, para. 46), the Court found that the marks were distinguishable on a conceptual level.

Ikea’s overarching reputation in the furniture field did not avail it in this case. Reputation, the CFI held, was relevant to assessing whether there was a greater or lesser likelihood of confusion, but this question only arose once it was established that the marks in question were identical or similar. The low degree of aural similarity was not regarded as sufficient to give rise to similarity between the marks, and consequently Ikea’s reputation never came into play.

Comment

Certain elements of this decision are surprising, to say the least.

The CFI was no doubt correct in observing that furniture purchases generally require a high level of attention. Anyone who has ever visited an Ikea store will know that the process is often not simple or quick, and Ikea itself emphasises style and décor, elements that require thought and planning.

However, the IKEA brand is internationally famous and although the word is a neologism, it is so strongly associated with the Swedish furniture retailer that, where furniture is concerned, it could plausibly be brought to mind by a logo prominently featuring a word such as IDEA, which differs by only a single middle letter. Arguably, even the low level of aural similarity found should have been enough to allow the Court to consider the effect of the retailer’s reputation on the public’s perception of the later mark. If this had been done, then the weight attributed to the visual and conceptual differences might have been more limited.

Moreover, although the CFI was following a previous ruling in holding that reputation was not relevant to determining whether marks or goods were similar, this logic seems strained. It has long been acknowledged that strong inherent distinctiveness or a reputation entitles marks to broader protection (Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc., Case 39/97, para. 18). If that broader protection is not invoked until after it has been decided that marks and goods are similar, then its effect would be muted indeed.

On a more general level, though, this decision shows that the impact of figurative devices when comparing word and composite marks is highly subjective. A further recent CFI decision involving the composite mark OMEGA3 and Rainbow Device found the figurative element to be more or less inconsequential, when many might have regarded it as at least as distinctive as the IDEA cube device (Ekabe International SCA v OHIM, Case T-28/05). Clearly, the impact of figurative elements in the comparison of marks can be hard to predict.

If there is a take-home message from Ikea, it must be that when considering conflicts between word and composite marks, the words in the composite mark should not automatically be assumed to dominate. Unless the goods are of a type generally requested orally, a substantial figurative element may be regarded as equally or more prominent in the overall impression.

Where purchases are made visually, then the more care taken in the purchase, the more important the figurative element is likely to be. In OMEGA3, the goods were everyday foodstuffs, but in Ikea they were less frequently purchased items whose selection involved more care. In assessing a possible conflict, the average consumer’s attention span is something that even a famous challenger cannot afford to ignore.