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Friday, 21 November 2003

SON SHINES IN OHIM

The IPKat has spotted an interesting OHIM Opposition Division decision on the registrability of O’ versus Mc surnames. O’Neill applied to register a figurative depiction of the work O’NEILL in various classes of goods, including Class 25. Peek, the proprietor of an earlier German mark for the work MC NEAL in Class 25, opposed O’Neill’s application in so far as it included sports and leisure clothing, headgear and footwear, especially sports shoes, casual shoes, sandals and socks. Peek argued that the signs and the goods were identical or similar, leading to a likelihood of confusion and particularly that the two signs would be pronounced identically because the prefixes had not aural effect and consumers would notice the main components of both signs (NEILL AND NEAL) rather than the prefixes (MAC and O’).

The opposition was rejected. The goods were either identical or similar. Peek’s articles of clothing encompassed O’Neill’s sports and leisure clothing and socks. Similar concerns meant headgear was identical or very similar to clothing, especially since headgear is meant to be fashionable as well as protecting wearers from adverse weather. O’Neill’s footwear was similar to Peek’s clothing since both were worn by humans and their function is to cover and protect the human body. Additionally, both are often sold in the same outlets and clothing manufacturers often produce footwear under the same mark. Consumers know of this practice and will therefore perceive the two types of goods as belonging to the same category.

However, two marks were not similar. Visually, the signs were different. Three of the six letters each contained were different. Additionally, the beginning of both signs, which is the part to which consumers pay the most attention and will be remembered most clearly, were different. So were the second parts considering the different composition of letters that made up each of them. Aurally, the two suffixes (NEAL and NEILL) would be pronounced in the same way by the relevant public (the German public because that was where the earlier mark was registered). However, the beginnings were completely different sounds and consumers’ attention is generally caught by the beginnings of signs rather than by their ends. Thus, aurally, the difference outweighed the similarities. Conceptually, the two marks had no meaning in the relevant country. Instead, they would be perceived as family names of foreign origin and so consumers would notice the difference between them.

To determine the likelihood of confusion, the attentiveness of the relevant public, the distinctiveness of the earlier mark and the similarity of the goods or services had to be taken into account. Here, the consumers in question were the standard average consumers of the goods in question as defined by the ECJ in Lloyd. To assess the distinctive character of the mark, it was necessary to make a global assessment of the capacity of the mark to distinguish the goods for which the mark was registered as coming from a specific undertaking. Peek did not argue that its mark had acquired distinctiveness so any distinctiveness had to be per se. However, Peek’s mark was averagely distincitve. There was no likelihood of confusion because although a lesser degree of one of the similarity factors can be made up for by the other and the goods were identical or similar, the signs were dissimilar so there could be no likelihood of confusion.

The IPKat is interested by the Opposition Division’s approach to assessing the similarity of the two names. He’s not sure why the fact that they were perceived as surnames did not qualify them for conceptual identity. On a strict reading, they are conceptually very similar because both “O’” and “Mc” mean “son of”, but chances are an average German consumer would not know this. He’s also not sure why the Opposition Division went on to consider the distinctiveness of the mark since the opposition was doomed to failure once the marks were found to be dissimilar. The similarity of goods assessment is also worthy of note, particularly the part about consumer perception being shaped by practice in the trade.

Find out what your surname means here and here
Famous Neils here, here and here


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