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Wednesday, 4 May 2005

TODAY'S EXCITEMENT FROM LUXEMBOURG


Two more Court of First Instance decisions were handed down today: they are

* Case T-359/02 Chum Ltd v OHIM, Star TV AG: Chum filed to register as a Community trade mark the word mark STAR TV, for services in Classes 38 and 41. Star TV opposed, citing a likelihood of confusion with its internationally registered figurative mark STAR TV

for services in the same classes. Unsurprisingly, the opposition succeeded. Surprisingly, Chum appealed. Unsurprisingly the CFI dismissed the appeal. The CFI was asked to state the obvious, in the face of arguments that a figurative mark could have no verbal element:
"49 Contrary to what the applicant seems to be maintaining, it must be acknowledged that, like the trade mark applied for, the earlier mark, inasmuch as it is composed of a verbal element, is also capable of being reproduced phonetically. Thus, in this instance, since the phonetic expression of the earlier mark coincides with the expression of its only verbal element – the words ‘star TV’ –, which corresponds to the trade mark applied for, it must be held that from the point of view of phonetics the two conflicting signs are identical".
* Case T-22/04 Reemark Gesellschaft für Markenkooperation mbH v OHIM, Bluenet Ltd: Bluenet was pushing for registration of the word mark WESTLIFE for goods and services in Classes 9, 16, 25 and 41; Reemark opposed, citing its earlier German and international registrations of the word mark WEST for goods and services in the same classes. The Opposition Division upheld the opposition on the ground of likelihood of confusion. The Board of Appeal reversed tha decision, considering that while the goods and services of the respective parties were part identical and part similar, the degree of similarity between the two marks was low. Reemark's appeal to the CFI was successful. That court said:
"27 Here, the sign Westlife is composed of two words joined together, the word ‘west’ and the word ‘life’. Thus, ‘west’ is one of two terms which alone form the mark applied for, Westlife, and the only term forming the earlier mark, West.

28 In relation to conceptual similarities, both trade marks evoke the idea of the West, since they both contain the element ‘west’. As to the second component of the mark applied for, the Board of Appeal rightly stated that the word ‘life’ may be recognised by the relevant public as being the English for the German word ‘Leben’ and, accordingly, as a term with an identifiable meaning rather than a made-up name.

29 Thus, the ‘life’ component, associated with the other term comprising the mark (‘west’), may be taken by the relevant public as a reference to a lifestyle.

Westlife's Community trade mark application goes west ...

30 The addition of the connotation concerning lifestyle is not sufficient to distinguish the two trade marks significantly in conceptual terms. Since both marks will be perceived as evoking western goods or services in the case of West or as pertaining to a western lifestyle in the case of Westlife, they both have similar connotations, which entails a degree of similarity from the conceptual point of view".

The IPKat thinks the Board of Appeal got it right and hopes Bluenet appeals further to the ECJ.

Going West here, here , here and here

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