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Friday, 8 September 2006

MEANWHILE, BACK AT THE CFI ...



Meanwhile, back at the CFI ...

There were two Court of First Instance decisions on Community trade marks on Thursday, plus a further decision that slipped beneath the IPKat's radar on Wednesday. They are

Case T-133/05 Meric v OHIM, Arbora & Ausonia (PAM-PIM'S BABY-PROP), 7 September. Meric applied to register as a Community trade mark the words PAM-PIM’S BABY-PROP for disposable napkin-pants (Class 16). Arbora & Ausonia opposed, citing a likelihood of confusion with their earlier Spanish registrations of the word mark PAM-PAM for "any ready-made clothing, in particular napkin‑pants ..." (Class 25) and a figurative mark PAM-PAM, illustrated here, for ‘napkin-pants made out of paper and cellulose (disposable)’ (Class 16). The Opposition Division upheld the opposition solely on the basis of the figurative mark, finding that the identity of the goods and the strong aural similarity of the marks was likely to confuse the relevant consumer. The Board of Appeal upheld that decision and the CFI has now done so too. On the issue of phonetic comparison the CFI had this to say:

"61 ... from the phonetic point of view, the dominant element of the trade mark applied for, ‘pam-pim’s’, and the earlier trade mark in question (PAM-PAM) are made up of two monosyllabic words which start with the same consonant ‘p’ and finish with the same consonant ‘m’. They also have in common the contested syllable ‘pam’. The only difference in pronunciation for the Spanish public concerns the central vowel of the second syllable ‘a’ in the earlier mark in question and ‘i’ in the mark applied for. That minor difference cannot under any circumstances bring into question the aural similarity which exists between the trade marks concerned.

62 As regards the words ‘baby-prop’ contained in the mark applied for, ... they occupy a secondary position within the sign as a whole. They cannot therefore bring into question the extensive aural similarity between the dominant element of the mark applied for and the earlier mark in question ...

63 The applicant’s assertion that the earlier trade mark in question resonates in the manner of a drum, as opposed to the trade mark applied for which relates to an aspect of softness, is not substantiated. In any event, it would not be sufficient to preclude all aural similarity between the mark applied for and the earlier mark in question, as the smoothness of the sound ‘pam-pim’s’ has not been established".

Case T‑168/04 L & D, SA v OHIM, Julius Sämann Ltd, 7 September.
L&D applied to register as a Community trade mark a figurative mark (left) for goods in Classes 3 (‘Perfumery, essential oils’) and 5 (‘Scented air fresheners products) and for services in Class 35 (‘Advertising; commercial business handling; commercial administration; office works’). Sämann opposed, citing a likelihood of confusion with its earlier registered Community and national trade marks that also consisted of tree pictures, for much the same goods. The Opposition Division dismissed the opposition in its entirety; the Board of Appeal dismissed Sämann's appeal in respect of the Class 35 services but allowed it in respect of all of the goods in question.

The Board deduced that the conceptual similarity of the conflicting marks could, at least in Italy, create a likelihood of confusion on the part of the public concerned. The differences between the conflicting marks, essentially based on the fact that L&D's fir tree constitutes a frame in which there is the design of an animated character and the verbal element ‘aire limpio’, would not prevent that likelihood of confusion because the mark in respect of which registration is sought could be perceived by the public concerned as an amusing and animated variant of the earlier mark. The Court of First Instance dismissed L&D's appeal from that decision. The IPKat is amused by this decision. He was not confused at all between the two marks because he didn't realise that L&D's mark was supposed to be a tree - he thought it was a humorous representation of a ghost.


Case T‑6/05 DEF-TEC Defense Technology GmbH v OHIM, Defense Technology Corporation of America, 6 September. The IPKat kept falling asleep while trying to read this decision, which looks quite important (the CFI annulled the decision of the Board of Appeal). He'll have a go at getting it sorted out in due course though.

1 comment:

Anonymous said...

Umm.....about the PAM PIM case, I think phonatic thing is weird. Who cares about how to pronounce? It's obviously will not confuse by me.

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