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Thursday, 27 October 2005

OHIM OPPOSITION DECISION IS A TIE


The IPKat brings tidings of an OHIM decision, displaying something of a lack of knowledge on the part of the Board of Appeal as to how the English language works.

Ascot Racecourse Limited applied to register a figurative sign, consisting of the words ROYAL ASCOT, a crown figurative element, and the words “since 1771” as a CTM for various items of clothing. Royal Ascot is the name of a prestigious annual race meeting that takes place annually at the Ascot racetrack in Ascot, Berkshire, in the UK. Ascot Karl Moese GmbH opposed the application for the clothing that the racecourse had applied for, but not for footwear. Its opposition was based on its ASCOT mark, which was registered in Germany for ties. The Opposition Division rejected the application both for clothing, and for footwear, even though footwear had not been contested. The racecourse appealed, arguing in particular that the ASCOT mark was not particularly distinctive, since it was descriptive of a type of tie, and this reduced the likelihood of confusion between the ASCOT mark and the applied-for mark.

The Board partially allowed the appeal, finding:

  • The racecourse had been right to argue that, if the earlier mark was non-distinctive, this could have an impact on how the conflicting marks were perceived and whether there would be a likelihood of confusion. While it was true that, according to the dictionary, “ascot” was a common word in the English language for a sort of necktie, it was the perception of consumers in Germany, and not in England that was relevant. The racecourse had presented no evidence that the word “ascot” had this meaning in German and thus that the average German consumer would see “ascot” as a generic designation for ties, rather than as a brand name. It appeared that the earlier ASCOT mark was validly registered in Germany, and so it was deemed to enjoy an average level of distinctive character.
  • The fact that consumers would associate the ROYAL ASCOT mark with an English city and with horseracing did not rule out the likelihood that consumers who had been exposed to the use of ASCOT on ties would be confused if they saw the ROYAL ASCOT MARK on the same or similar items.

  • The differences between the two marks were not very distinctive, and would not outweigh the similarity caused by the presence in both marks for the word ASCOT. In fact, it was implicit in the racecourse’s argument that the word ASCOT was the dominant element of its mark since the mark and the horseracing event were based on the same name and the horseracing event was well-known under the ASCOT name. Conceptually the marks were similar because, if German consumers were not familiar with the meaning of the ASCOT term as a generic word for a type of tie or as the name of the horseracing event, they would only see the use as meaning a brand of tie.

  • German consumers would likely be confused on seeing the applied-for mark used for ties, and also for cravats and scarves since they were sold in the same outlets and made of the same material as ties. Also, both were worn around the neck.

  • Confusion was unlikely between the ASCOT mark as registered for ties and the ROYAL ASCOT MARK as applied for for items of clothing other than ties, cravats and scarves. Ties are accessories, rather than clothing per se and unlike clothing, they are not intended to cover the body. One could not wear a tie instead of other clothing articles and clothing and ties tended to originate from different manufacturers.

  • AKM could not rely on rights in its corporate name, Ascot Karl Moeses GmbH, to prevent the registration under Art.8(4) of the CTMR since the Karl Moeses element of that name was as distinctive as the Ascot element.
The IPKat notes that, while it did not make a difference to the end result in this case, since the relevant consumers were German and not English, the Board is assuming that the way words are used in English dictionaries automatically reflect the way in which English consumers speak. This can lead to results that do not reflect reality in the market. The IPKat would like to know how many of his English readers knew that “ascot” was the name of a type of tie.

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