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Thursday, 17 January 2008

Making a spectacle of themselves?

Tuesday's decision of the Court of First Instance (CFI) in Case T-9/05 Hoya Kabushiki Kaisha, v OHIM, Indo Internacional SA, was relatively unexceptionable. Hoya had applied to register as a Community trade mark the word AMPLITUDE for 'eyeglasses; lenses for eyeglasses; frames for eyeglasses; sunglasses; contact lenses' in Class 9. Indo opposed, citing its earlier Spanish registration of a figurative mark consisting of the word "Amply", in extremely pale turquoise lettering, for identical goods in the same class. The Opposition Division rejected the opposition, concluding that there was no likelihood of confusion among relevant consumers. The Board of Appeal and CFI agreed, however, that the opposition was well founded.

On the issue of visual comparison of the respective marks, the CFI had this to say:

"36 ... the Board of Appeal found ... that there was a clear similarity. It stated that the beginning of the two conflicting marks was practically identical and that the consumer’s attention was particularly drawn to it. It considered that the differences stemming from the letters, the colour of the earlier mark and the length of the mark applied for (the additional ending ‘tude’), could not therefore diminish the overall visual similarity of the conflicting marks ...

37 In that regard, the Court would point out, first, that the earlier mark is, with the exception of a single letter (‘y’ instead of ‘i’), included in its entirety in the mark applied for. Secondly, the part of the mark sought which corresponds to the earlier mark is at the beginning and that ... particularly catches the consumer’s attention ..., as the applicant admits.

38 ... the earlier mark primarily consists of a word element, ‘amply’, ... it also includes figurative elements, in this case ordinary, turquoise-blue printed letters. By contrast, the mark applied for is a word mark consisting of the word ‘amplitude’.

39 ... as the Board of Appeal correctly found, the figurative elements of the earlier mark are marginal. The mere graphic representation of the earlier mark, consisting of printed characters, of a more or less commonplace and ordinary kind, even if they are turquoise-blue in colour, cannot draw the average consumer’s attention to any figurative components other than the letters of which it consists ...

40 ... apart from the difference between the letters ‘y’ and ‘i’ in the part which is common to both marks ..., the mark applied for can be distinguished from the earlier mark by the four additional letters forming the ending ‘tude’. Thus, the mark applied for, which is nine letters in length, is four letters longer than the earlier mark. ... contrary to the applicant’s claims, the four additional letters of the mark applied for which form the ending ‘tude’ are, in relation to the beginning, which is practically identical to the earlier mark, only an insignificant suffix. The ending ‘tude’ is very closely related to the ending ‘tud’, which is extremely common in Spanish.

41 Since the beginning of the element common to both marks plays a determinant role in the consumer’s perception of the mark ..., the Board of Appeal was right to find that there was a visual similarity between the conflicting marks taken as a whole".
The IPKat feels that there is something missing. the products in respect of which the earlier mark and the subsequent application are to be used are optical aids for people who, presumably, don't see very well -- which is why they need them in the first place. Yet there is no suggestion that the impaired vision of at least some relevant consumers is a factor to be taken into account when assessing the similarity between the marks. Merpel says, there's nothing missing: impairment of vision is a factor to be taken into account when assessing likelihood of confusion, not similarity of marks. Tufty interjects at this point that the CFI doesn't mention that factor there either.

As blind as a bat here, here and here
Cat's eyes here


Anonymous said...

Jeremy, Merpel and Tufty - stop adding factors OK! Just how many factors in the multifactorial assessment do you really want, and do you think adding more will make life more certain ?

Anonymous said...

Shhhuuuurely all TMs are confusingly similar when the assessing person is not wearing their corrective lenses?? (of course maybe with the exception of sound and smell marks!) One blob looks pretty much the same as another blob when I take my glasses off, with perhaps a slight hint given by colour.

Verena von Bomhard (Lovells, Alicante) said...

What I think is missing is due consideration of the fact that the relevant Spanish consumer will see AMPLY as clearly an English term but AMPLITUDE as a Spanish term just with an "e" in the end. Moreover the registration "amply" should have been given a reduced scope of protection because the term as such is commonplace and even has a meaning in relation to a desirable characteristic of lenses - namely that they amplify the vision. I find the decision very unsatisfactory.

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