This case has virtually nothing to do with the thing for which Volvo is most famous: boringly reliable, safe and well-manufactured cars. What is it about, then?
[that's 10 years ago, notes Merpel: this is of course a trade mark case, and 10 years is nothing in the life of a trade mark -- but it's half the life of a full-term patent and more than three times longer than an unregistered Community design] the applicant -- let's call her Elena since her surname is a bit of a mouthful for a small feline-- sought to register as a Community trade mark a figurative sign (see illlustration, left, for what the Kat thinks is the right logo: the version in the judgment on the Curia website states "Image not found") which clearly and undeniably contained the word ‘solvo’. The goods in respect of which registration was sought were, following a restriction made during the proceedings before OHIM, ‘computer programs for warehouse management systems and computer programs for container terminal systems’ in Class 9.
In February 2005 Volvo opposed this application, relying based upon its earlier Community word mark VOLVO which was registered for, among other things, ‘computer software’ in Class 9 and ‘vehicles’ in Class 12. This opposition was based on two grounds, first that on account of the similarity of the respective marks and the identical nature of their respective goods, there was a likelihood of confusion of the relevant consumers under Article 8(1)(b) of the Community Trade Mark Regulation and secondly that, on account of the reputation of the earlier mark, the use of a similar mark by Elena, without due cause, would take unfair advantage of the reputation of that earlier mark under Article 8(5) of the same Regulation.
In August 2006 the Opposition Division rejected the opposition on the ground that the signs at issue were not similar. That decision was upheld in August 2007 by the Second Board of Appeal. Like the Opposition Division, the Board examined the merits of the opposition by taking into account only the earlier mark. As regards Article 8(1)(b), it found that the marks at issue were not similar and that, consequently, one of the conditions referred to by that provision was not satisfied. As regards Article 8(5), in addition to there being no similarity between the marks at issue, there was no ‘factor common’ to both signs which might lead to the belief that there was an economic link between them [this is the last we hear of Article 8(5) at this juncture].
On 2 December 2009 [just one short day after it was rebranded, having previously been known as the Court of First Instance] the General Court annulled the Board of Appeal's decision: the existence of a certain degree of phonetic similarity between the signs at issue [the fact that they rhymed: "-olvo" and "-olvo"] precluded the conclusion that one of the essential conditions for the application of Article 8(1)(b), this being the similarity of the signs, was lacking. In those circumstances, the Board of Appeal was ‘required to carry out a global assessment of the likelihood of confusion, in order to determine whether, in view of the degree of phonetic similarity found between the signs at issue, of the identity of the goods covered and of the reputation of the earlier sign, the public at which the goods in question was aimed might believe that those goods came from the same undertaking or from economically-linked undertakings.
|Like all good undergraduates, Binkie soon|
learned how to look attentive even when
his thoughts were far, far away ...
Elena then applied to the General Court for the decision of the Board of Appeal to be annulled, which it duly did.
The General Court first asked who indeed was the relevant consumer? It was not disputed, the Court recited, that the goods covered by the Solvo mark must be regarded as being aimed solely at professionals such as managers of warehouse complexes or managers of container terminals in seaports. Accordingly the relevant public consisted only of that specialist public [Merpel, who has never seen any Solvo software in her favourite games shops, thinks this must be right]. While the Board of Appeal found that this professional public displays a relatively high degree of attention, they didn't appreciate quite how high this degree of attention might be: account must also be taken of the fact that the software covered by Elena's mark was aimed at undertakings rather than at mere mortals, was not purchased on a daily basis [but that can be said about pretty well all software, can't it?], might involve significant investments and constituted an essential work tool for at least some employees, all these factors having the effect that the staff responsible for the choice of software would display a particularly high degree of attention when comparing goods from different producers operating on the market. Having regard to those factors, the relevant public’s degree of attention must be held to be particularly high.
|Phonetic similarities can actually be fun ...|
|... which is more than can be said for the|
legal reasoning generated by EU TM law
|Lucky CJEU stagiaires get to play |
with the forklift ...
The argument that the software in question might be ordered orally was irrelevant, the Court added, since consumers would inevitably be faced with the image of the sign applied for during the selection process, with the result that the doubts which the phonetic similarities may have given rise to regarding the commercial origin of the goods will be dispelled by the readily perceptible visual differences which distinguish the signs at issue. In any event, the phonetic aspect of the comparison of the signs retains its importance only if the consumer is not usually able to compare the signs visually during the process of selecting the product.
On this basis, the Court concluded, the visual dissimilarities outweighed the phonetic similarities between the signs at issue. Thus, in spite of the identity of the goods and the high level of distinctiveness of the earlier mark, there was no likelihood that the consumers, who were particularly attentive and wished to ascertain the identity of the producer, might think that the goods covered by the signs at issue came from the same undertaking or from an economically-linked undertaking [ie they wouldn't think that anything with the Solvo logo on it had anything to do with Volvo].
This Kat is aware that he will face a barrage of criticism from trade mark scholars and Volvo enthusiasts everywhere, but he thinks that, so far as likelihood of confusion is concerned, this is the right result now, it was the right result 10 years ago and a small but well-aimed dose of common sense should have told Volvo that this was so. In his opinion, if there was any chance of success it would have been on the Article 8(5) opposition -- and even that would be pretty tenuous.