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Friday, 13 July 2012

Watch Your 'Mc's and Basic Vocabulary: McBaby Too Similar To McKids

This case has nothing to do with burgers
New to the handy linguistic tool, this Kat has been having a lot of fun using Google Translate this week. Copying over phrases to re-enter them in order to totally contort the English translation until it becomes exquisite gibberish. It's the little things, they say, whoever they are. And as with intellectual property, particularly Community trade marks, it is necessary that an existing mark be protected against newer marks applied for so that the distinctive character and reputation of the mark do not become diluted and confused into gibberish messes in the minds of the relevant public. Such an assessment was made of two (Mc)marks by the General Court in Case T-466/09 Comercial Losan SLU v OHMI, as reported last Friday on the Class 46 blog. Before reading on, please be aware of this Kat's caveat - the linguistic nuances may have been lost as the judgment is currently available only in French or Spanish here.

The Proceedings

In 2006 McDonald's International Property Co. Ltd, a third party, filed an opposition against a Community trade mark application by Comercial Losan, SLU for a figurative sign containing the word 'McBaby' under article 42 of Regulation No 20/94 (now article 41, Regulation No 207/2009) on the relative grounds for refusal contained in article 8(1)(b) and 8(5) (the same in Regulation No 207/2009). In support of the opposition McDonald's relied on three earlier marks. The first is a Community figurative mark containing the word 'McKids', the second is the Community word mark 'McDONALD's' and third is the well known large arched 'M' figurative mark (sadly not 'M' for Merpel). The opposition was partly upheld in 2008 by the Opposition Division: although there was a likelihood of confusion within the meaning of Article 8(1)(b) regarding products in Class 25 and certain services in Class 35 covered by the mark applied for, there was no likelihood of confusion regarding other services in Classes 35 and 39 covered by the mark. Further, the opposition based on article 8(5) was not fulfilled. As such, opposition in respect of goods in Class 25 and all services in Class 35 covered  by the mark applied for were upheld. MacDonald's soon after lodged an appeal with OHIM against the decision...
The mark applied for by Comercial Losen, SLU
The earlier mark

'The Contested Decision'

The Board of Appeal partly upheld the Opposition Division's findings. In assessing the likelihood of confusion between the mark applied for (McBaby) and the earlier Community trade mark (McKids), taking into account that the relevant public consists of average consumers of all the Member States and the comparison of products and services in question, the Board held; i) the goods in Class 25 covered for the mark applied for and the earlier mark were identical; ii) the 'retail services in shops and clothing made of textile products' in class 35 covered by the mark applied for and the goods in Class 25 covered by the earlier mark were similar; iii) there was a degree of similarity in the visual and phonetic similarity and conceptual similarity; iv) as such, there was a likelihood of confusion within the meaning of article 8(1)(b) and the action for products in Class 25 and 'services in retail stores and garments of textiles' in Class 35 were dismissed. In addition, the Opposition Division's finding that article 8(5) was not satisfied in relation to import-export services in Class 35 was annulled.

The Appeal

Comercial Losan brought an action against the decision of the Board of Appeal of OHIM seeking first, to annul the contested decision, secondly, an order for registration of the mark applied for and thirdly, that OHIM pay costs.

The second ground was found inadmissible: although the OHIM must take measures necessary to comply with the judgment of the judge of the Union, it was not for the Court to issue directions to OHIM. As such, the sole plea under consideration was the finding of infringement under article 8(1)(b). It was submitted that the Board of Appeal erred in finding i) the goods in Class 25 covered by the mark applied for and the earlier mark were identical and ii) the 'retail services in shops and clothing made of textile products' in Class 35 covered by the mark applied for and the products in Class 25 covered by the earlier mark were similar, resulting in the conclusion that there was a risk of confusion between the two marks.

In assessing the likelihood of confusion, by having regard to the visual, aural and conceptual similarity of the marks, the Court held; although there were significant visual differences between the 'McBaby' and 'McKids' marks, there was no denying that there still existed a low degree of visual similarity; although the word elements 'baby' and 'kids' are aurally different, phonetic similarity in this case resulted from the pronunciation of the common element 'Mc'; conceptually the words 'baby' and 'kids' are part of the basic vocabulary of the English language and will therefore be understood by much of the relevant public as referring to children. The common verbal element 'Mc' added to a finding of conceptual similarity. The marks therefore had a low degree of similarity in visual terms and were conceptually and phonetically similar. As such, the Board of Appeal did not err in finding that the marks were broadly similar and that there was a likelihood of confusion.

So, the application was dismissed and Comercial Losan, SLU ordered to pay costs applied for by OHIM. The Court was clear that the 'Mc' element was not the dominant element of the signs, and the analysis of the similarity of the marks was made without considering the dominant character of 'Mc', as the broad similarity of the marks was enough in itself. In describing the word element 'Mc' at [41], the Court noted that it could also be understood as the prefix surname of some Scottish and Irish names 'for a typical part of the relevant public and has no significance to another part of the relevant public'. Maybe something got lost in Google translation, but that almost comes across as a peculiar dig at the surname traditions of the great and good noble peoples of Scotland and Ireland ...

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