A RIGHT ROYAL CASE FROM OHIM

The IPKat brings tidings of an interesting OHIM Board of Appeal relative grounds case. Rolex Promotions applied for a figurative mark consisting of a crown device and the word ROLEX for goods and services in a wide range of classes. Hallmark opposed the application based on earlier figurative marks consisting of a crown device on its own and crown devices with the words HALLMARK and HALLMARK CROWN for various paper articles and gift items. Hallmark argued that there was a likelihood of confusion between the applied-for mark and its marks under Art.8(1)(b) of Regulation 40/94 and that Art.8(5) also applied. Both parties pointed claimed that their marks had acquired distinctiveness through use and that this enhanced their case. Hallmark’s opposition was unsuccessful before the Opposition Division since the marks were found not to be similar. Hallmark appealed, pointing in particular to the fact that both parties’ marks contained a crown element.

The Board of Appeal dismissed the appeal. Points of interest include:

The pictorial element of a crown is not very distinctive. It may suggest a certain quality or refinement of the goods for which it is used, and crowns may be found in numerous trade marks. As a point of departure, crowns and their verbal equivalent, the word “royal” have a limited scope of protection.
The fact that some marks have a more limited scope of protection than others does not contradict the wording of Art.8(1)(b).
The reputation of an opponent’s mark does not come into play until the marks have been found similar, nor does the reputation of the applied-for mark. Two mark do not become similar just because one or both of them have a reputation. Instead, before a mark can claim an enhanced scope of protection because of its reputation, it must at least show that it is entitled to some protection vis-à-vis the other mark at issue i.e. that the two marks are at least similar.
Use on internal Hallmark publications did not prove enhanced distinctiveness of Hallmark’s marks.
It had also not been shown that the crown device used in combination with the word element “Hallmark” had acquired enhanced distinctiveness. There were conflicting opinions on whether enhanced distinctiveness can be assumed for a mark when the evidence presented only shows this mark being used as a component of a combined mark. However, there was a difference between the two settings in which the issue has been raised. In the reference made by the UK Court of Appeal in the HAVE A BREAK CASE and the OHIM Board of Appeal’s decision on the registrability of the THE GREATEST SHOW ON EARTH as a CTM, the question was one of overcoming a hurdle of minimum distinctiveness in order to get the mark on the register. In this case though, the question was one of showing an enhanced distinctiveness which entitles a mark to a broader scope of protection than the scope of protection than it is inherently entitled to. As a matter of principle, it could not be ruled out that enhanced distinctiveness of a mark may be assumed on the basis of evidence just showing that the mark had been used as part of another. However, in cases such as this one where the first mark i.e. the crown device, has such limited distinctiveness, it was unlikely that consumers, when exposed to the combined mark would retain the trivial crown as the main elements of the mark which would, through wide use, have overcome its inherent limited distinctiveness.
Regarding the earlier marks containing word elements, the crown device had no determinative bearing on the assessment. This leaf the word elements HALLMARK and HALLMARK CROWN, which clearly where not similar to ROLEX visually or orally. Conceptually, ROLEX would cause consumers to think of the famous watchmaker, rather than some meaningless sequence of letters.
Regarding the earlier mark consisting exclusively of a crown, this was not similar to the mark applied for. Even if the marks had some similarity and the goods were identical, this would not warrant a finding of a likelihood of confusion, given the limited inherent distinctiveness of the earlier mark and the fact that consumers are meant to be reasonably well-informed and circumspect.

The IPKat is puzzled by the Board’s comments on the conceptual meaning of the word ROLEX. The implication is that marks consisting of invented works that are successful as trade marks may benefit from less protection if the fact that they have a meaning leads to them being considered less distinctive. The Board also appears to have taken a circular approach to distinctiveness, first saying that it can’t be taken into account until the marks have been found to be similar but then using it to judge the similarity of the marks.

More crowning glory here and here