DOLPHIN: Assessing the Similarity Between Goods for Identical Word Signs

The names that we give to objects, norms, types, classes and many other things, be they corporeal or incorporeal, and how we define such things are often sources of contention. Perhaps this is due to an inherent subjectivity, our perception of the elements that make up the definition are themselves limited. Moreover, the tools that we use to communicate the definition further dilute the accuracy and precision of a definition. The various categories of linguistics such as the lexicon, grammar and dialect, let alone issues of semantics and pragmatics, can obscure the effective communication to another human being of the intention. The great abyss between words and meaning. Are things defined by their types or are types defined by their things? Such queries came to this Kat's mind when considering the General Court's judgment in Case T-361/11 Hand Held Products, Inc. v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), where the similarity between goods in the same class for the identical word sign DOLPHIN was assessed on the application of EU law's well-known relevant factors including, among other things, nature, intended purpose, method of use, whether the goods are in competition with each other or complementary and close connection.

The action was brought against the decision of the First Board of Appeal of the OHIM that rejected an opposition to the registration by Orange Brand Services Ltd of the identical word sign DOLPHIN for goods in the same class as the earlier mark. The applicant and proprietors of the earlier mark, Hand Held Products Inc. claimed that the goods (in Class 9, Nice Agreement), 'barcode and image scanners and related software for use therewith', covered by the earlier mark were sufficiently similar to the goods, 'telecommunications systems and installations; interactive terminals for displaying and ordering goods and services; electrical and electronic accessories' covered by the mark registration was sought for, that the likelihood of confusion and association with the earlier mark (Article 8(1)(b), Reg. No. 207/2009) meant that the opposition proceedings should not have been rejected.

This Kat loves dolphins

Before embarking on a glorious assessment of similarity and likelihood of confusion, the Court rejected that the Board of Appeal's assessments of the similarity of the goods in question, which refute the applicant's arguments, amounted to new arguments justifying the submission of evidence for the first time before the Court. So how did the Court distinguish the goods for identical marks?

First, it compared barcode scanners and interactive terminals for displaying and ordering goods and services and found that the essential difference between them is in terms of their method of use and intended purpose: the goods were not substitutable nor in competition with each other nor complementary since they are intended for different publics. The former is a device intended to be used by professionals for capturing encrypted data in a particular way, whereas interactive terminals have the specific purpose of enabling the general public to obtain information about goods and services. Although certain interactive terminals may have integrated barcode scanners that does not mean that the goods are of the same nature. Further, products of different origin may be assembled in a composite third product, but that is not a sufficient ground for concluding that all those components are similar and that, for the relevant public, they have the same origin (this was the sentence that got this Kat considering the nature of things).

Secondly, it compared barcode and image scanners and related software for use therewith and telecommunications systems and installations and found that, again, the intended purpose was different. This second assessment was broadly reasoned the same as the first: The fact that telecommunications systems and installations are found in an ever-increasing number of electronic devices does not suffice to change the essential characteristics of those devices (at [54]).

Thirdly, it compared barcode and image scanners and related software for use therewith and electrical and electronic accessories. Here, however, the Court found that the two products were similar contrary to the opinion of the Board of Appeal and OHIM that barcode scanners are hand-held or stationary input devices. Barcode scanners are not stand-alone devices but rather accessories to main devices in the absence of which the latter would serve no purpose. 

Finally, it assessed the overall likelihood of confusion globally on the well settled factor that a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. Although the Board of Appeal was entitled to conclude that there was no likelihood of confusion in respect of the goods covered by the earlier mark and interactive terminals for displaying and ordering goods and services and telecommunications systems and installations (the first and second types of goods), it had erroneously concluded that there was no likelihood of confusion so far as accessories were concerned: 'There is in fact a real risk that the public might believe that the goods at issue come from the same undertaking or from economically linked undertakings' (at [64]).

In conclusion, the Board of Appeal's decision to reject the opposition in respect of electrical and electronic accessories was annulled, and the remainder of the action was dismissed. The parties were to bear their own costs.

Cats hide in barcodes, sometimes

So there we have it. An example of legal reasoning void of subjective element, or is it?

The judgment was also reported on on Class 46 on the 23rd of July 2012 here. Do the IPKat readers think that such judicial determinations of what goods are may dwindle in light of the changes post-IP TRANSLATOR, as reported by the IPKat here and here? And, more broadly, what is the nature of a thing that means it can be a dissimilar type determined by the class of user but then similar by the categorisation of its nature?