Becker match goes to a fifth set

It's a few weeks since this duel was decided, and even more than a week since this year's Wimbledon tennis tournament came to its close -- and anxious readers are still emailing the IPKat daily to ask him "Whatever happened to former tennis legend Boris Becker?" Becker's court of choice this time was not Wimbledon's Centre Court, but Luxembourg's rather less exciting Court of Justice of the European Union. The first of these courts is famous for setting the pulse racing; in the latter court, the pulse is scarcely detectable.

The duel in question was Case C-51/09 P Barbara Becker v Harman International Industries, Inc., Office for Harmonisation in the Internal Market, an appeal to the Fourth Chamber of the Court of Justice from the General Court.

In November 2002 Barbara Becker -- former wife of well-known former tennis player Boris Becker -- applied to register as a Community trade mark the words BARBARA BECKER for a variety of goods, including cash registers and calculating machines, in Class 9. Harman, a company that looks after Boris Becker's interests, opposed, citing its earlier Community word marks BECKER ONLINE PRO and BECKER for goods in the same Class. The grounds of opposition were that, under Article 8(1)(b) of the Community Trade Mark Regulation, on account of the similarity of the marks and the identity or similarity of the respective goods, there was a likelihood of confusion, and that, under Article 8(5) of the same Regulation, use of Barbara's mark, without due cause, would be detrimental to the reputation or distinctive character of Harman's marks or take unfair advantage of their reputation.

The first set went to Boris since the Opposition Division accepted that there was a likelihood of confusion and held for Harman: the goods designated by two marks were identical and the marks were similar, having an average degree of visual and phonetic similarity and being conceptually identical since they referred to the same surname. The second set went to Barbara, though, when the Board of Appeal held in her favour. Holding that the goods designated by the respective marks were partly identical and partly similar, the Board then compared the earlier word mark BECKER and the mark BARBARA BECKER. In its view, visually and phonetically there was only some degree of similarity between those signs; however, conceptually the signs were clearly distinct in Germany and in other countries of the European Union since the relevant public would perceive the mark BARBARA BECKER in its entirety, rather than as a combination of ‘Barbara’ and ‘Becker’. What's more, Barbara Becker was actually famous in her own right in Germany, and ‘Becker’ was a very common surname. Accordingly the differences between the two signs were significant enough to eliminate any likelihood of confusion. For good measure, the Board added that the opposition under Article 8(5) also failed: if the marks weren't similar for Article 8(1)(b) purposes, they weren't similar for Article 8(5) purposes either.

Boris took the third set when the General Court upheld Harman's challenge to the dismissal of its opposition under Article 8(1)(b). In the view of the Court, the Board had wrongly concluded that the marks were clearly distinct and was wrong to assess the relative importance of the component ‘Becker’ as compared with the component ‘Barbara’. In reaching its decision the General Court observed that

* case law had stated that, at least in Italy, consumers generally attributed greater distinctiveness to the surname than to the forename making up a trade mark, so that the surname ‘Becker’ was likely to have attributed to it a stronger distinctive character than the first name ‘Barbara’ in the composite mark;

* the fact that Barbara was famous in Germany as the former wife of Boris did not mean that, conceptually, the marks at issue were not similar: the two marks referred to the same surname and were therefore similar, especially since in a part of the European Union the component ‘Becker’ in the mark BARBARA BECKER was, as a surname, likely to have attributed to it a stronger distinctive character than the component ‘Barbara’, which is simply a first name;

* the component ‘Becker’, even if it was not the dominant component of the composite mark, would be perceived as a surname, which is commonly used to describe a person, and would retain an independent distinctive role in that mark;

* the finding that there existed a likelihood of confusion was not invalidated by the argument that a composite mark and another mark can be considered to be similar only if the common component constitutes the dominant component in the overall impression created by the composite mark; nor could it be maintained that the case-law on composite marks was not applicable in the present case because the mark BARBARA BECKER consisted of a first name and a surname.

On 24 June Barbara squared the match at 2-2 when the Court of Justice of the European Union, allowing her appeal, set aside the decision of the General Court and remitted the opposition to the General Court for the final set. According to the Court of Justice

* while it is possible that, in any given part of the European Union, surnames have a more distinctive character than forenames, it is appropriate to take account of factors specific to the case and, in particular, to the fact that the surname concerned is unusual or, on the contrary, very common, which is likely to have an effect on that distinctive character. That is true of the surname ‘Becker’ which is common;

* account must also be taken of whether an applicant who applies to register his or her first name and surname, taken together, as a trade mark is well known, since that factor may obviously influence the perception of the mark by the relevant public;

* in a composite mark, a surname does not retain an independent distinctive role in every case solely because it will be perceived as a surname. The finding with respect to such a role may be based only on an examination of all the relevant factors of each case;

* the General Court therefore erred in law in basing its assessment of the conceptual similarity of the marks on general considerations taken from EU case-law without analysing all the relevant factors specific to the case, in disregard of the requirement of an overall assessment of the likelihood of confusion, taking account of all factors relevant to the circumstances of the case, and based on the overall impression produced by the marks at issue.

The IPKat notes with approval the observation by the Court that, if the grounds relied on by the General Court in order to conclude that the marks in this case were conceptually similar were consistent with Article 8(1)(b), the result would be that any surname which constitutes an earlier mark could be effectively relied on to oppose registration of any mark composed of a first name and that surname, even though, for example, the surname was common or the addition of the first name would have an effect, from a conceptual point of view, on the perception by the relevant public of the composite mark.

Merpel adds, ex-wife, cash registers, calculating machines ... no comment.

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