Today the General Court upheld the decision of the Board of Appeal. On the issue of phonetic similarity the Court had this to say:
" The Board of Appeal found that the fact that the group of letters ‘ca’ could be recognised in the mark applied for did not create a notable similarity with the earlier word mark. The striking graphical differentiation between those two letters in the mark applied for will cause, according to the Board of Appeal, the relevant public to read them separately, as an abbreviation [and therefore not to pronounce them?]. It further found that the earlier mark would be read as an abbreviation or as one word. The striking differences regarding the first letter will therefore remain in the phonetic comparison .... According to the Board of Appeal, the foregoing reasoning applies equally to the comparison between the mark applied for and the earlier figurative mark ...The IPKat thinks this would be laughable if it weren't so tragic. It was only in December that the General Court found, in Case T-35/08 Codorniu Napa v OHIM - Bodegas Ontañon (ARTESA NAPA VALLEY), that the two marks represented here were confusingly similar with one other, even though they plainly aren't and 82% of IPKat readers who responded to the poll agreed that they weren't. The Court was influenced by the phonetic similarity of the words ‘arteso’ and ‘artesa’ in that case, even though the figurative signs weren't remotely close. Now, signs insisting of the letters KA and CA aren't phonetically close enough, when the figurative elements consist of scarcely anything except the
67 Therefore ... the Board of Appeal did not base its assessment of phonetic similarity between the marks at issue on the alleged rule that the first letter of a word is the most important. Consequently, that argument by the applicant must be declared ineffective.
68 In addition, in so far as the applicant argues that, independently of the position of the letters of a word made up of a consonant and a vowel, it is the vowel and not the consonant which dominates the overall phonetic impression of such a word, it must be noted that although a vowel is indeed more audible than a consonant the phonetic prominence of a vowel in a word composed only of a consonant and a vowel does not render the consonant negligible in the pronunciation and in the phonetic perception of that word [Merpel read this three times and then gave up trying to understand it ...]. The overall perception of the consonant and the vowel must therefore be taken into account in the assessment of the phonetic similarity of the marks at issue.
69 In the present case, despite the particular graphics of the mark applied for, the mark could also be perceived by the relevant public as the word ‘ca’ and not as an abbreviation. In addition, even though the trade mark applied for might in that case be pronounced differently depending on the relevant language, that trade mark might be pronounced and perceived phonetically as ‘ka’, that is to say in the same manner as the earlier marks. Therefore, a degree of phonetic similarity between the marks at issue must be recognised.
70 However, the Board of Appeal was correct to find that the relevant public will perceive the mark applied for as an abbreviation rather than a word and that therefore it will not be pronounced or perceived phonetically as ‘ka’. [can't something be both an abbreviation and a word, like "OHIM" or "WIPO"?]
71 Therefore, some degree of phonetic similarity between the marks at issue must be recognised but it is not very high. Without making an error, the Board of Appeal therefore could find that the phonetic similarity between the marks at issue was not ‘notable’".
Merpel adds, look at this: application in 2003, opposition in 2005, Board of Appeal decision in 2007, General Court ruling in 2011, plus total over-intellectualisation of the process of comparing marks. Does anyone say there's no need for reform of the European trade mark system?
Baby you can drive my car here