IF IT WORKS, OPPOSE IT

The Court of First Instance's decision on the appeal in Case T-352/02 Creative Technology v OHIM, Ortiz was posted today. CT applied to register the word mark PC WORK for "apparatus for recording, transmitting and reproducing sound or images, loudspeakers, amplifiers, record players, tape players, compact disc players, tuners, and parts and fittings for all the aforesaid goods" in Class 9. Ortiz opposed, citing his earlier registration of a Spanish figurative mark for "electronic audio equipment; loudspeakers; sound reproducing apparatus; radio, television and video apparatus", also in Class 9. The Opposition Division upheld the opposition on the ground that there was a likelihood of confusion between them; the Board of Appeal agreed. So, dismissing the appeal, did the Court of First Instance. The CFI said, in paragraphs 48-49:

"the word ‘pc’ in the trade mark applied for has a descriptive character in relation to the goods concerned, being, both in English and in Spanish, an abbreviation for ‘personal computer’. From the conceptual point of view, the distinctive element of that mark therefore consists of the word ‘works’. In the case of the earlier mark, it must be held, ... in the absence of non‑verbal figurative elements having independent evocative force, that the dominant element on a conceptual level consists of the word ‘work’.

Secondly, it must be regarded as plausible, as the applicant itself seems to recognise, that the targeted public, being made up of consumers familiar with the use of computers, has sufficient knowledge of English to understand the meaning of the word ‘work’ and to recognise its plural form in the word ‘works’".

The IPKat is reluctant to take issue with so many others, but queries the conclusion that there is a likelihood of confusion -- if only on the ground that he tried to be confused, but failed.