A BIT OF A PASH? THAT'S TOTALLY BASS

Earlier this week, the CFI decided a second trade mark case – Phillips-Van Heusen v OHIM . This time an application to register BASS as a CTM for footwear and clothing was opposed by the owner of a German registration of PASH for leather goods and clothing, belts, footwear and headgear. In September of 2001,the Board of Appeal had that the marks were confusingly similar. However, a complication arose in the active part of the Board’s judgment. While the opponent restricted the scope of its opposition to the registration of BASS for clothing, the operative part of the original Board judgment stated that the Board “rejects the application for a Community trade mark” without limiting the rejection to clothing, even though the limitation to clothing was made explicit in the non-operative part of the judgment. The Board sought to correct this on 18 February 2002 by adopting a decision amending the offending paragraph of the September judgment by limiting the rejection of the CTM application to clothing.

The CFI held that the Board’s initial decision was unlawful because the Board can only reject a CTM application to the extent that the opponent argues for in his opposition. Here the opponent had based his opposition only on clothing so the Board could only reject the CTM application for clothing. However, because the Board had issued a correction of this error on the 18 February 2002 and because the applicant had withdrawn its objection to the scope of the Board’s decision, the action to annul the Board’s September 2001 decision was now devoid of purpose and did not need to be ruled upon.

The CFI also annulled the substance of the Board’s decision, holding that BASS and PASH were not similar enough to lead to a likelihood of confusion between the two parties’ goods. While visually the two marks had the same number of letters and same two central letters, the public were not more likely to focus on the central letters than any of the other letters and the similarity between the letters B and P was limited. Aurally, though B and P are pronounced very similarly in some regions of Germany and the only vowel contained in both signs was identical and even though “sh” sound is not used in German, a sufficient part of the German public was familiar enough with the pronunciation of English words ending in “sh” that they would not mispronounce PASH as “pass”. Conceptually, BASS called to mind the voice of a singer of musical instrument while PASH was likely to be associated with the German dice game Pasch. This clear difference in meanings counteracted any visual or aural similarity, even though there was no connection between those meanings and the goods. Therefore, while the goods of the two parties were either similar or identical, the marks were not similar enough on a global appreciation for there to be a likelihood of confusion leading to the registration of BASS being barred under Article 8(1)(b) of the Regulation 40/94.

The IPKat notes that when he first read this case, his immediate thought was that the applied for mark should be pronounced “bass” with a short, sharp “a” as in "act", rather than as “base”, which is how the voice of a singer would ordinarily be pronounced by native English speakers. This is because there is an English brand of beer named BASS which is pronounced with a short "a". This goes to show that a person’s (or feline’s) perception of a trade mark in registration case can be shaped by previous exposure to it or even to a similar mark owned by another undertaking. The case also got him thinking about the operative parts of CFI and ECJ judgments. He realised that one of his masters goes straight to the operative part of such judgments because, at the end of the day, this is the binding part, while the other pays more attention to the reasoning that comes beforehand since this tends to be more detailed and to include a discussion of issues that do not make their way into the operative part. The IPKat would be interested to hear which part of judgments his readers focus on and why. Please tell the IPKat by email or by posting a comment below.

Want to sing bass? You’re in good company – click here, here and here