Author: Esther B. Schnepper (Institute for Information Law (IViR), University of Amsterdam)
Case T-394/10 Elena Grebenshikova v OHIM, General Court of the European Union (Third Chamber), 5 December 2013
Journal of Intellectual Property Law & Practice (2014), doi: 10.1093/jiplp/jpu036, first published online: March 25, 2014
In this recent case, the General Court of the European Union (GC) annulled the decision of the Board of Appeal of the Office for Harmonisation in the Internal Market (OHIM) concerning the opposition of Volvo against registration of the trade mark SOLVO, reasoning that there was no likelihood of confusion given the particularly high degree of attention of the relevant public and the inevitability of visual perception of the mark.
Article 8(1)(b) of Regulation 207/2009 on the Community trade mark provides that a trade mark shall not be registered in the case of likelihood of confusion with an earlier trade mark in the territory in which the earlier mark is protected, in view of its identity with, or similarity to, the earlier mark and the identity or similarity of the goods or services covered by the trade marks. Settled case law further explains that a likelihood of confusion is constituted by either the impression of the public that the goods or services in question come from the same undertaking or by the impression that these come from economically linked undertakings. Whether there is likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case.
The opposition procedure proved to be a long journey. Initially the opposition was rejected twice, both by the Opposition Division and the Second Board of Appeal, according to which no similarity existed between the marks and consequently Article 8(1)(b) did not apply. However, in an earlier judgment of 2009 the General Court of the European Union (GC) found that the existence of phonetic similarity was sufficient for the applicability of Article 8(1)(b) and that, accordingly, a global assessment of the likelihood of confusion should be made. Subsequently, the case was referred to the First Board of Appeal, which upheld the opposition and rejected the application. The Board of Appeal reasoned that Volvo's reputation in the field of cars led up to the mark having a higher degree of distinctive character for goods such as computer software, particularly given the fact that most cars use computer software. Moreover, purchasing the software did not necessarily imply visual perception of the mark, as the software could be ordered orally. Also the decisive factor in the act of purchase would be the content rather than the visual aspect of the software. Consequently, according to the Board of Appeal, the visual differences did not outweigh the phonetic similarities and therefore likelihood of confusion did exist. In the case in question the GC evaluated the latter judgment of the Board of Appeal.
The relevant public
First the GC considered the Board of Appeal's interpretation of the relevant public. Indeed, the product of Grebenshikova was directed exclusively to professionals in the warehouse or container terminal sector: this specialist public was correctly assumed to have a high degree of attention. However, given that purchasing the software would not happen on a daily basis, that the purchase would be a significant investment and that the software would be an essential work tool within the company, the GC found that, instead of a relatively high degree of attention, the relevant public's degree of attention should be particularly high when comparing goods from different producers operating on the market.
Likelihood of confusion
After reaffirming that there was no visual (or conceptual) but only phonetic similarity between the signs, the court assessed the likelihood of confusion. An important basic assumption regarding this assessment was that the visual, phonetic or conceptual (dis)similarities are not always of equal importance, but their weight might fluctuate according to the circumstances of the situation. In the present case, this could result in the phonetic similarity being counterbalanced by their visual dissimilarity, when the marketing of the product would necessarily involve visual perception of the mark by the public.
The GC took the view that such was the case. A purchasing specialist company is assumed to examine scrupulously the characteristics of the goods and the identity of the producers. After all, the purchase of such software entails a significant investment and a high impact on the logistical effectiveness of the company. Further, introducing new software for the logistic system would at least require installation on specialised software and training of the staff using the new system. Before deciding on the purchase of this type of software, it is therefore highly plausible that an elaborate selection process would take place, which may include visiting the producer's website, studying the written presentation of the software, having meetings with the producer's employees and using a trial version of the product. The argument that initially the software trade mark would be referred to orally, as OHIM had put forward, could not alter the conclusion of the court that visual perception of the mark before purchase of the product was inevitable. Consequently, in consideration of the particularly high degree of attention of the relevant public, the scale tipped to no likelihood of confusion and the opposition was annulled.
The judgment of the GC illustrates the complexity of the assessment of likelihood of confusion. Many factors are of importance, each carrying a different weight in different circumstances. The judgment reaffirms the casuistic character of the assessment, as all possible conditions in practice should be taken into consideration. Apparently the degree of attention of the relevant public can be divided into sublevels; in any case into a relatively and a particularly high attention. Further, the manner of marketing and the purchasing process should be investigated conscientiously, as the (absence of) visual or phonetic perception influences the outcome of the assessment.
Apart from the legal significance this judgment also illustrates how a trade mark opposition procedure can linger for years; more than ten years have already passed since Grebenshikova filed the application. For trade mark conflicts this is not an unusual time span, but, as appropriately observed in the IPKat article ‘When Volvo met Solvo: a lesson in EU trade mark law’ (here), ten years is quite some time when compared to the life of for instance a patent or an unregistered Community design. Additionally, the results of the various instances can differ significantly, sending the parties from pillar to post. The present judgment for example has the same outcome as the initial two instances, yet on different grounds. However, this GC judgment might not be Volvo's final destination; Volvo could try its last luck at the Court of Justice of the European Union, with possibly yet another conclusion.