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Trade marks: registry review – May 2015

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13/05/2015

FAZENDA [1]

The Opposition Division has upheld an opposition to an application for registration of the mark FAZENDA by the proprietor of the mark 3 FAZENDAS. The contested mark contained stylised verbal elements and also the words “RODIZIO BAR & GRILL”.

The opposition was based on Article 8(1)(b) of the Community Trade Mark Regulation, namely identical goods and similar marks, resulting in a likelihood of confusion. The Opposition Division considered that consumers would focus their attention on the FAZENDA element of the contested sign, this being the most prominent and distinctive element of it. It considered that a lesser degree of similarity between the goods or services covered by the competing signs could be offset by a greater degree of similarity between the marks and vice versa; in this case, it was of particular importance that the contested goods – alcoholic beverages (except beer) – were identical.

PUMA [2]

Puma SE’s opposition to registration of the mark PUMA in respect of goods in Class 7, namely “lathes; CNC (computer numerical control) lathes; machining centers; turning center; electronic discharge machine” was rejected in its entirety. Puma SE is the proprietor of the mark.

The opposition was based on Article 8(1)(b) and Article 8(5) of the Community Trade Mark Regulation. To succeed under Article 8(1)(b) it was necessary for Puma SE to show a similarity of the goods in question, in order to demonstrate a likelihood of confusion. The goods in respect of which Puma SE’s mark was registered had no connection with the goods in Class 7 in respect of which registration was sought – the nature and main purpose of the goods was different, they had different distribution channels and were not in competition nor complementary.

Under the Article 8(5) ground of opposition Puma SE argued that its mark had a reputation in the relevant Member State and the use without due cause of the contested mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of its earlier trade mark. The Opposition Division did not consider that the evidence adduced by Puma SE was sufficient to show the existence of its mark was known by such a significant part of the relevant public that it reached the threshold necessary for a finding of reputation.

APPLE [3]

The Opposition Division has upheld Apple’s opposition to registration of the mark iphion, Apple being the registered proprietor of the mark IPHONE. The contested services were in Class 35 (advertising; business management; business administration; office functions); Class 38 (telecommunications) and Class 41 (education; providing of training; entertainment; sporting and cultural activities).

For reasons of procedural economy, the Opposition Division focused o the comparison of the signs on the French-speaking part of the relevant public. The Opposition Division considered the signs to be visually and aurally similar but conceptually dissimilar. Taking a global assessment to the issue of a likelihood of confusion, the Opposition Division found that there was a likelihood of confusion, taking into account the imperfect recollection of the consumer, and that consumers tended to remember similarities rather than dissimilarities. The Opposition Division found that the differences between the marks were not sufficient to counteract the similarities.

CHANEL [4]

Chanel has successfully opposed the registration of the sign BOY CAPEL, based on its prior registration of the mark BOY CHANEL. The contested goods were in Class 25: clothing, footwear, headgear.

The Opposition Division considered the goods covered by the competing signs were identical and the signs were visually, aurally and conceptually highly similar. The word BOY was non-distinctive in respect of clothing and was considered to have little impact when considering the likelihood of confusion. Both CHANEL and CAPEL were known to be family names, the former being the name of the French fashion designer and the latter reportedly the muse of the aforementioned designer. The part of the public that was aware of the link between the two names could think that the goods came from economically linked undertakings.

The Opposition Division made two more important points regarding the likelihood of confusion of marks relating to clothing: first, the visual aspect played an enhanced role in the likelihood of confusion, given that the choice of item of clothing is generally made visually. Secondly, it is common for undertakings active on the market to use sub-brands, i.e. signs that derive from a principal mark and which have common elements, to distinguish the scope of one product from another. In the circumstances, the Opposition Division found the opposition to be well founded.

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[1] OHIM, Opposition No B 2 394 040
[2] OHIM, Opposition No B 2 170 556
[3] OHIM, Opposition No B 1 498 800
[4] OHIM, Opposition No B 2 368 895