OHIM
having two parts) when purchasing the goods in question, any conceptual differences were insufficient to overcome the visual and phonetic similarities. Te court therefore found that on a global appreciation, there was a likelihood of confusion between the marks, rejected the appeal and awarded costs against the appellant.
believing that they would have a similar effect to Viagra. As Viaguara could not demonstrate any fair use of the mark, the appeal failed.
In Case T-353/09, mtronix OHG v OHIM, (February 1, 2012), the court rejected an appeal against the Fourth Board of Appeal’s decision to refuse in part a CTM application for mtronix for various class 9 goods following an opposition based on an earlier registration of Montronix covering class 9 goods. Te court held that the two marks were visually, phonetically and conceptually similar and that the relevant goods were either identical or similar, so there would be a likelihood of confusion between the marks for the relevant public (specialists as well as the general public).
In Case T-321/09, skytron energy GmbH & Co KG v OHIM (February 2, 2012), the court upheld
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OHIM’s refusal on absolute grounds to register the word mark ‘Arraybox’. Te General Court considered whether the mark had the direct and specific relationship required in relation to all of the goods and services for which registration was sought. It agreed with the First Board of Appeal that the function of the apparatus and instruments to be used in conjunction with power generation in class 9 required, inter alia, the use of arrays which are commonly arranged in data boxes. Moreover, the services applied for in classes 37, 38 and 42 required the provision of such data boxes, or directly referred to the repair, installation or maintenance of these boxes. Te court therefore upheld OHIM’s decision that because of the descriptive meaning of Arraybox in relation to all of the goods and services, the application had to fail.
In Case T-305/10, Marlies Hartmann-Lamboy v OHIM (February 7, 2012), the court rejected an appeal relating to an opposition to a CTM application for ‘Dynique’ on the basis of an earlier CTM registration of ‘Diptyque’. Looking at the usual considerations of visual, phonetic and conceptual similarity, the court held that the fact that both marks shared the first letter D, and suffix que, and had six letters in common, meant that the differences arising from the letters which the marks did not share—P, T and N—were insufficient to affect their visual similarity.
Te court also held that phonetically the marks were even more similar, due to the syllables Di/ Dy and ique having the same pronunciation; and that, alongside no evidence that consumers would grasp the meaning of Dyptique (a painting
World Intellectual Property Review Annual 2012 23
In a relatively rare scenario, in Case T-64/11, Run2Day Franchise BV v OHIM (February 7, 2012), the court overturned a decision of OHIM’s First Board of Appeal which had overturned a decision of the Opposition Division, which itself had upheld an opposition, based on earlier marks, to a CTM application for a figurative mark containing the element ‘Run 2’, on the basis of earlier marks also containing the elements Run and 2. Te court disagreed with the board, concluded that it had made errors in assessing the degree of similarity between the marks and its global appreciation of the likelihood of confusion, and overturned the board’s decision.
It is tempting to conclude that the board of appeal erred alarmingly. However, it is relatively easy to follow the board’s lines of argument and concur, in view of the arguably low distinctiveness of all the marks in question. Te most compelling impression leſt by the judgment is the comprehensive manner in which the court dismantled the board’s decision. n
Chris McLeod is director of trademarks at Squire Sanders LLP. He is based in London and can be contacted at:
chris.mcleod@
squiresanders.com
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