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|
|Beyond Retro use|
the "V" word too ...
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.While she is not normally a betting Kat, Merpel is confident that we have not yet heard the last of this litigation.
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.