• ALICANTE ABSTRACTS

    Know Conceivable Differences

    What conceivable difference is there between one trade mark and another? It may be a tough call, as the concept of conceptual similarity and differences is a nebulous one. Equally murky waters surround the question of what effect conceptual similarities and differences have on whether trade marks are confusingly similar. No single test has been, nor perhaps could be, laid down in the Community system, which requires a global assessment taking into account the marks, the goods, the marketplace, linguistic matters and other factors relevant to determining the expectations of the average consumer.

    The Court of First Instance has nevertheless considered the nature and impact of conceptual similarities and differences in recent cases, and useful guidance can be gleaned from its approach.

     

    SIR Logo v. ZIRH (Case T-355/02)

    In this case, Zirh International Corp. applied to register ZIRH as a CTM for inter alia cosmetics and hygienic products and beauty care services. The application was opposed by Mühlens GmbH & Co. KG based on an earlier CTM for the figurative mark SIR appearing beneath a crest, also covering cosmetics and hygienic products in Class 3. The opposition was based on similarity of marks, identity and similarity of goods and a likelihood of confusion under Article 8 (1) (b) of the CTM Regulation.

    OHIM rejected the opposition, holding that although Zirh’s goods and services were identical or similar to the goods claimed by Mühlens, visual and conceptual differences outweighed the phonetic similarity between the marks and rendered confusion unlikely.

    On Mühlens’ appeal, the Court of First Instance agreed that although the marks were visually different, they were phonetically very similar. Phonetic similarities could, however, be outweighed by conceptual differences. The case therefore turned on the conceptual comparison of the marks.

    The CFI held that for conceptual differences to outweigh phonetic similarities, “at least one of the marks in issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately.”

    In this case, SIR had an immediately recognisable meaning in English, which was spoken in the U.K. and elsewhere in the E.U. The word ZIRH, on the other hand, had no meaning. The marks could therefore be regarded as conceptually different, and that difference was enough to outweigh the strong phonetic similarities. The CFI upheld the rejection of the opposition.

     

    MUNDICOR v. MUNDICOLOR
    Joined Cases T-183/02 and T-184/02

    In these cases, the CFI considered an appeal from OHIM’s decision to uphold an opposition by González Caballo SA to a CTM application for MUNDICOR of El Corte Inglés SA for almost all goods and services in all (then) 42 classes. Opposition was based on a likelihood of confusion with an earlier Spanish registration for MUNDICOLOR in Class 2 for paints, varnishes and the like.

    El Corte Inglés SA appealed, arguing that although the goods were identical or quasi-identical, OHIM had wrongly concluded that the marks were similar.

    The CFI regarded the marks as strongly similar both visually and phonetically. In particular, the final “-or” in both marks was likely to be accorded a strong emphasis in Spanish, which was relevant since Spain was the market in which the opponent’s earlier right was protected. The question was therefore whether there was a conceptual difference strong enough to outweigh these similarities and avoid confusion.

    The CFI uttered a resounding, “no.” For conceptual differences to outweigh other similarities, at least one of the marks must have, from the point of view of the relevant public, a clear, specific and immediately understandable meaning, and the other mark must have no such meaning or a different meaning altogether.

    In this case, both marks incorporated the prefix “mundi” which, although not a word in Spanish, was nevertheless derived from the Latin word for “world” and was similar to the equivalent Spanish word, “mundo.” The word MUNDICOLOR consisted of a word similar to “mundo” and the Spanish word for colour, “color.” It therefore had “a certain evocative force.” Nevertheless, it was not a dictionary word and did not convey any clear and specific meaning. Likewise, MUNDICOR had no meaning. True conceptual differences were not, therefore, present.

    In light of this, the CFI agreed that there was a likelihood of confusion and upheld OHIM’s decision to allow the opposition.

     

    Comment

    These cases provide useful insight into how the CFI weighs up conceptual similarities and differences in comparing marks.

    It is evident that where there are visual and phonetic similarities, or at least one of these, conceptual differences between marks containing verbal content can have a significant effect. Nevertheless, they are likely to have an impact only where at least one of the marks has a meaning that can be immediately grasped by the relevant public, taking into account the language spoken in that market.

    This seems harsh on trademarks which do not have a meaning in language, but are so evocative that the relevant public is likely immediately to perceive them in a certain way. These kinds of conceptual differences are more difficult to label, but they can have an effect on whether confusion arises, and should be taken into account. A rigid test which dismisses such differences purely because a word has no dictionary meaning is not entirely in touch with reality.