For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

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Tuesday, 22 March 2011

The sleep of reason? Baby you CA drive my KA

From the day of its launch, this Kat has always disliked the Ford KA trade mark.  He has remained uncertain as to how to pronounce it: is it "Ka" to rhyme with "car", which is naughty if it's registered and used for cars? Or is it "Ka" to rhyme with "Kat" but with the "t" chopped off?  But now he's feeling quite sorry for it, following today's ruling of the General Court in Case T‑486/07, Ford Motor Company v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Unnecessarily Long and Pompous Name), Alkar Automotive, SA.  
In short, Alkar applied in June 2003 to register as a Community trade mark the figurative sign CA (illustrated, above right) for a range of items which included parts for cars.  Ford opposed, citing earlier Community trade marks for the word KA and the figurative mark containing the word KA (illustrated, left).  The opposition was based on the submission that, on account of the similarity of the marks and the identity/similarity of the goods, there was a likelihood of confusion.  In November 2005 the Opposition Division rejected the opposition and, in October 2007, the Fourth Board of Appeal upheld that decision.  In its view, the mark applied for and each of the earlier marks were sufficiently dissimilar to exclude any likelihood of confusion on the part of the relevant public -- no matter how similar the goods concerned were and despite the fact that the distinctiveness of the earlier trade marks was higher than average.

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 ...

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’".
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 latters letters KA and CA.  Knowing that Ford can afford to litigate and that appeals to the Court of Justice of the European Union are cheap, the Kat suspects that an appeal may be in the offing -- though given the current state of European trade mark law he wouldn't bet his bottom dollar on a reversal.

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
KAKA here

7 comments:

Anonymous said...

Ka ca kaka?
Kekeke.

Anonymous said...

Why is this not just another case of an appellate court being invited to substitute its fact finding for that of the court below? Even though the general court agreed, where the point is one of degree what is the appeal court doing being drawn into the argument?

Here's a challenge - write the judgment in as few words as possible. My attempt: "The Board's decision was OK. Why are you here?"

Mark Schweizer said...

I also think the decision is driven by the desire not to overrule the Board of Appeals in questions of likelihood of confusion unless absolutely necessary. Maybe the same point could have been put less verbose, as anon @ 6.43 suggests.

Plus, there is an implicit, but unfortunately never spelled out, tendency of courts to grant short two letters/one syllable marks a narrower scope of protection so as not to allow "monopolization" of such "elementary" signs (not saying this is normatively correct, but I believe it is driving some of these decisions).

Guy said...

It is lucky OHIM does not have to deal with marks in the Thai language. A simple consonant vowel combination can have up to five meanings according to the tone; upper, middle, lower, rising or falling. The combination K & OW can mean rice, news, white, hill or something else according to tone.

Anonymous said...

Interesting point...tonal trademarks...

Anonymous said...

Jeremy: latters -> letters?

Jeremy said...

@Anon 6:16am, Thanks for picking up the typo. I wish more people did! It makes for better word-searches

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