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Wednesday, 30 April 2014

Vintage litigation -- or Beyond endurance? CTM struggle continues

The Ninth Chamber of the General Court gave judgment today in a fierce battle over a Community trade mark application in Case T‑170/12, Beyond Retro Ltd v OHIM, the other party to the proceedings being a US company, S&K Garments, Inc., which was victorious in the Board of Appeal.

Vintage cats enjoy a sip of vintage wine
This, as readers might guess, is another of those unbearably and protracted Community trade mark (CTM) oppositions. Back in October 2008 S&K secured an international registration, designating the European Community, for the word mark BEYOND VINTAGE for ‘jewellery, precious stones and watches’ (Class 14), ‘clothing accessories, handbags, purses and wallets’ (Class 18) and 'clothing’ (Class 25). In November 2009 Beyond Retro opposed, basing its opposition on its own earlier Community word mark BEYOND RETRO for, inter alia, ‘clothing, headgear and footwear’ (Class 25). Said Beyond Retro, given the similarity of the marks and the fact that both were for clothing in Class 25, there was bound to be a likelihood of confusion among the relevant class of consumers [presumably people in Europe who wear clothes, guesses Merpel, who is greatly attached to her own fur coat but wears nothing underneath]. This likelihood should bar registration of BEYOND VINTAGE under Article 8(1)(b) of the CTM Regulation.

Beyond Retro use
the "V" word too ...
The Opposition Division generously upheld the opposition for goods in Classes 18 and 25, but rejected it for the goods in Class 14. In March 2011 S&K Garments and Beyond Retro both filed a notice of appeal and, in January 2012, OHIM's Fourth Board of Appeal upheld S&K's appeal on the ground that there was no likelihood of confusion, and dismissed Beyond Retro's appeal for much the same reason. The Board of Appeal, defining the average end consumer as being "reasonably well informed and reasonably observant and circumspect", agreed with the Opposition Division that S&K's goods were identical or similar to the ‘clothing, headgear and footwear’ covered by the earlier mark and confirmed that there was no similarity between 'clothing, headgear and footwear' and ‘jewellery, precious stones and watches’. Both marks consisted of English language word elements, which would be recognised as such and understood by some folk in the EU but not by others. There was a low degree of visual and phonetic similarity between the marks for both the English-speaking and non-English-speaking public and. as for non-English-speakers, there was no conceptual similarity between them either. Accordingly there was only a low degree of similarity because of the difference in their conceptual (lack of) meaning. Finally the Board of Appeal found, in contrast to the Opposition Division, that the inherent distinctiveness of the earlier mark was normal for the non-English-speaking public, and lower than average for the English-speaking public.

Today Beyond Retro's application to annul the Board of Appeal's decision was upheld. According to the General Court:
89 ... it is apparent ... that the Board of Appeal’s analysis regarding the comparison of the signs was also carried out with regard to the English-speaking public. The Board of Appeal found, as it did in respect of the non-English-speaking public, that there was a low degree of visual and phonetic similarity. By contrast, as regards the conceptual comparison, unlike what it found as regards the non-English-speaking public where it concluded that there was no conceptual similarity, the Board of Appeal found that there was a low degree of conceptual similarity between the marks at issue.

90 That latter finding concerning the conceptual aspect of the comparison might, to a certain extent, have been capable of giving rise to a change in the Board of Appeal’s findings on the likelihood of confusion with regard to the English-speaking public compared with the other part of the relevant public.

91 That analysis is not capable of being called into question by the fact that the Board of Appeal also categorised the distinctiveness of the earlier mark as lower than average in respect of the English-speaking public, as OHIM maintained at the hearing. The global assessment of the likelihood of confusion implies, for the Board of Appeal, not only taking into account the distinctive character of the earlier mark, but, above all, weighing up the various relevant factors regarding the similarity of the goods and that of the signs and their interdependence, as is apparent from settled case-law ...

92 The statement of reasons for the contested decision does not show that the Board of Appeal carried out a global assessment of the likelihood of confusion as regards the English-speaking public. That omission, as regards a legal consideration having decisive importance in the context of the decision, makes it impossible to understand, in a clear and unequivocal manner, the conclusion attached to the reasoning followed by the Board of Appeal in its assessment of the likelihood of confusion concerning that public.

93 In that regard, ... the Board of Appeal failed to provide a sufficient statement of reasons.

94 It follows that the contested decision, in so far as it concerns the goods in Classes 18 and 25, is unlawful on account both of the infringement of Article 8(1)(b) of Regulation 207/2009, as regards the existence of a likelihood of confusion with regard to the non-English-speaking public, and of the infringement of the obligation to state reasons, as regards the global assessment of the likelihood of confusion with regard to the English-speaking public.
While she is not normally a betting Kat, Merpel is confident that we have not yet heard the last of this litigation.

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