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Wednesday, 7 July 2004


Yesterday the IPKat's translation watch blogged the Court of First Instance decision in Case T-117/02, Grupo El Prado Cervera, SL v OHIM. The applicant wanted to register the word CHUFAFIT for processed and fresh nuts in Classes 29 and 31 respectively. The application was opposed by the owner of earlier Spanish figurative and word trade marks CHUFI for, among other htings, fresh and dried fruits. The legal basis for the oppisition was Article 8(1)(b) of the CTM Regulation, in that the applicant's mark was likely to cause confusion. Both the examiner and the Board of Appeal dismissed the opposition: they considered that the respective parties' goods were identical but that the marks were neither identical nor similar. The Court of Appeal more or less agreed. It did not explicitly say that the respective marks were dissimilar, though it did say that the dissimilarities between them were sufficient to dispel any likelihood of confusion. In particular, the CFI said (nb in this quote the word "applicant" means "opponent"):

"53 The Court finds that the prefix ‘chuf’, which is common to the competing signs, designates the tiger nut (or rush nut), whose Spanish name is ‘chufa’ and which, in this case, is used to make the popular drink known under the name ‘horchata’ (tiger nut cordial) which is particularly marketed in Spain by the applicant. Consequently, in the overall impression conveyed by the competing signs, the target public will perceive the element ‘chuf’ as a descriptive element of the goods designated by the competing signs and not as an element enabling the commercial origin of those goods to be distinguished. The element ‘chuf’ is therefore devoid of distinctive character and cannot be regarded as the dominant element of the overall impression conveyed by the competing signs.

54 On the other hand, as the Office has correctly observed, in the global impression conveyed by the competing signs, it is the final parts of those signs which will enable the target public to perceive the signs as imaginary words and not as words which are solely descriptive. However, it is important to note that, from the conceptual point of view, neither the suffix ‘fit’, so far as the Community mark applied for is concerned, nor the letter ‘i’, as regards the applicant’s earlier marks, has any particular meaning in Spanish. On the conceptual level, the comparison of those elements is therefore irrelevant. The fact remains that the visual and phonetic differences between those elements are sufficient to enable, in the overall assessment of the competing signs, any likelihood of confusion between those signs to be ruled out on the part of the target public. Furthermore, even supposing, as the applicant argued for the first time at the hearing, that the suffix ‘fit’ of the mark applied for refers to the word ‘fit’ in English, one of the various meanings of which evokes a person in good physical shape, and that a significant part of the target public has sufficient knowledge of English to understand such an evocation, which has moreover not been demonstrated by the applicant, the Court considers that such evocation is not necessarily descriptive of a characteristic of the goods covered by the trade mark applied for and that, besides, it is only likely to rule out further any likelihood of confusion between the competing signs. In any event, such an argument, which seeks to deny the distinctive character of the Community trade mark applied for, does not form part of the subject-matter of these proceedings, which, as follows from the findings in paragraphs 22 and 23 to 25 above, relate solely to the existence of a relative ground for refusal, namely the likelihood of confusion between the competing signs".
The IPKat says that this is just another in a long line of unmeritorious Article 8(1)(b) appeals that are only made because it's so easy to make them. Perhaps CTM applicants should be forced to justify appeals on relative grounds of opposition by reference to some significant legal issue that needs to be clarified.

Tiger nuts here, here and here; Tigger nuts here
Tigers here, here and here

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