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Friday, 17 July 2015

Not Kool: EU General Court decides on the DINKOOL trade mark

It seems that these days the inclusion of well-known names in new trade marks is quite common, or at least an attempt to do so in the guise of creativity. This Kat has often pondered whether the mere use of a part of a trade mark, or the inclusion of a mark in a new variant of a name, could prevent the registration of a new mark. Nevertheless, he seems to have got his answer in Case T-621/14 Infocit - Prestação de Serviços, Comércio Geral e Indústria, Lda v OHIM and, although the matter is by no means ‘hot news’ at this point, it still merits some discussion.

Infocit lodged an application for a Community trade mark for the word “DINKOOL” in respect of several goods in classes 1, 2, 3, 6, 7, 12, 16, 20 and 21.  The application was opposed by Deutsches Institut für Normung eV, who owned the registered trade mark “DIN” (trade mark no. 0229048), who opposed it under Articles 8(1)(b) and 8(4) of the Council Regulation 207/2009 on the Community trade mark. They also relied on an earlier non-registered sign, “DIN”, used in Germany. No factual argument was put forth in relation to Article 8(4), and the claim subsequently failed before it had even been debated.

The General Court first assessed the claim under Article 8(1)(b) on a likelihood of confusion in the relevant territory between the applied for mark and a prior existing mark. The Board of Appeal’s initial findings on the relevant public were not challenged by Infocit, which was considered to be Germany. Infocit also did not contest the Board of Appeal’s decision on whether the goods for which the mark was registered were identical, meaning the Court had to finally assess whether the marks themselves were visually, conceptually or phonetically similar.

Some marks just aren't 'kool' enough
As per the Board of Appeal’s decision, the General Court also saw that the two marks were visually similar. The dissimilarities (horizontal bars above and beneath the DIN mark) and the addition of the word “kool” do not sufficiently distinguish the two marks, and the Court did note that as the first part of the applied for mark is “DIN”, more importance has to be given to it as the first part garners more importance from the relevant consumer. The marks where therefore seen as visually similar, even with the slight deviations between them. As for phonetic similarity the General Court further agreed with the Board of Appeal’s decision, and saw that, although the marks differ in both length and in the amount of syllables they contain, the difference in their phonetic character was only slight. There was therefore a level of phonetic similarity.

The Court then turned to the conceptual similarity of the marks. As “DINKOOL” is not a German word, the Court quickly determined it was a fantasy word, and the relevant public would break it into its respective components: “DIN” and “KOOL”. Although the German public would likely know the meaning of the word “KOOL” as a misspelling of the English word “cool”, they would most likely not be aware of the word “DIN” and its meaning in the English language. Through this dissection of the mark the relevant public would likely associate the word “KOOL” with the business of the intervener, should they perceive the word “DIN” to represent their business initially and therefore connect the two even if present in a single mark. However, as the word is a fantasy word, no conceptual similarity existed, as the relevant public would not perceive the mark, even with the existence of “DIN”, to relate to the business of the intervener.

Finally, the General Court firmly established a likelihood of confusion between the two marks, agreeing with the Board of Appeal, and dismissed the appeal.

One has to observe that the decision largely hinged on the existence of the previous mark in its entirety in the applied for mark, which caused them to be very similar. Although this Kat by no means knows how prevalent the use of “DIN” is with the German populace in relation to Deutsches Institut für Normung, he does have to agree with the Court’s assessment in this case as to the marks’ similarity. The case goes to show that one has to be careful if using a registered trade mark as a whole in a new mark, even if one would imagine they are very different from each other. 

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