NOT VITAKAT ...; CLASH OF THE ROSSIS

At least the mark's not Vitakat...

Good news, says the IPKat - one of today's two Court of First Instance rulings on matters of Community trade mark (CTM) law IS in English. It's Case T‑277/04, Vitakraft-Werke Wührmann & Sohn GmbH & Co. KG v OHIM, Johnson’s Veterinary Products Ltd. Johnson's predecessor in title applied to register the word VITACOAT as a CTM for animal coat treatments, flea- and lice-killers and brushes in Classes 3, 5 and 21. Vitakraft opposed, citing earlier German registrations of the word VITAKRAFT for pets' feeding bowls, shampoos, brushes etc. After (i) a good deal of argy-bargy over the translation of Vitakraft's certificates and (ii) the assignment of the application to Johnson's, the substantive issue fell to be determined: was there a likelihood of confusion, given the partial identity/similarity of the parties' goods and the similarity of their marks?

No, said the Opposition Division and it rejected the opposition. The Board of Appeal agreed. Similarity between the marks was low, particularly at the conceptual level (Kraft meaning 'strength' or 'power' in German). Nor did Vitakraft's evidence demonstrate the high degree of distinctiveness of its mark that would entitle it to a higher level of protection. Vitakraft then appealed to the CFI, which dismissed its appeal. On the comparison of marks, the CFI said this:

"59 ... there is a slight visual similarity constituted, essentially, by the first four letters of both signs being identical, but considerably diminished on account of the difference between the second part of the signs at issue, namely the words ‘kraft’ and ‘coat’.

60 Likewise, there is a slight phonetic similarity constituted by the identical nature of the first two syllables (‘vi – ta’), but considerably diminished by the phonetic difference between the word ‘kraft’ (marked by the presence of the vowel ‘a’ and the consonants ‘r’ and ‘f’) and ‘coat’ (marked by the presence of the vowel ‘o’).

61 Lastly, given that the word ‘Kraft’ has a specific meaning which is immediately obvious to German consumers, whereas the word ‘coat’ will have no meaning for them or will be recognised, at the very most, as being an English word which has a different meaning, it must be held that there is a marked conceptual difference between the signs. Such a conceptual difference is capable of counteracting to a large extent the slight visual and phonetic similarities of the signs at issue ... The presence of the prefix ‘vita’ in the conflicting signs does not alter that assessment; it will be perceived as a prefix so that the overall impression made by the signs is to a large extent determined, at the conceptual level, by the second part of the signs.

62 In view of the conceptual difference between the signs at issue and their different visual and phonetic features, the Board of Appeal’s finding that the signs are similar only to a very slight extent, as the conceptual difference is likely to counteract to a large extent the elements of visual and phonetic similarity, must be upheld".

The IPKat concurs. Like the recent ECHINAID/ECHINACIN case (see IPKat post here), this one turns on similarities that are largely based on a shared descriptive or allusive prefix that no-one should be allowed to monopolise. Merpel adds, I'm just itching to try that flea killer. I hope it comes up to scratch ...


Clash of the Rossis

The other CFI case this morning, Case T-97/05, Sergio Rossi SpA v OHIM, Marcorossi Srl, is in French and Italian versions only. What the IPKat can say is that Marcorossi applied to register as a Community trade mark the word MARCOROSSI for goods in Class 18 (bags, cases, small leather goods, wallets, holdalls, umbrellas) and 25 (footwear, belts, clothing). Sergio Rossie opposed, citing earlier Italian registrations of MISS ROSSI and SERGIO ROSSI for goods in Classes 3, 18 and 25. Citing a likelihood of confusion, the Opposition Division upheld the opposition, but the Board of Appeal allowed Marcorossi's appeal.

Today the CFI upheld the Board of Appeal decision and dismissed Sergio Rossi's appeal. The IPKat thinks this is just about right. The marks look different; while they have an obvious aural similarity (both ending in the surname Rossi), it's not normal for consumers to choose fashion goods and accessories without seeing them first, so the aural similarity shouldn't be crucial. If that's not what the decision says, can some kind person let the IPKat know?