Seeing stars and non-dominant rabbits: a couple of trade mark decisions and a rant

Seeing stars.  All sorts of things have been occupying this Kat's attention for the past few weeks so he hasn't been able to bring you any thoughts or comments about some of the more interesting Community trade mark (CTM) cases that have come from the EU's General Court. In one of these cases, Case T-342/12, Max Fuchs v OHIM, Les Complices, decided back in October, the General Court was faced with an opposition by Les Complices, the owner of CTM and French registrations for the five-pointed star on the left, maintaining that there was a likelihood of it being confused with the CTM applicant's five-pointed star on the right in respect of bags and clothing. Yes there was, said the court in upholding the Board of Appeal's decision, since they were visually similar, and conceptually identical and covered both identical and similar goods.

Now this is the interesting bit: the Board of Appeal's decision was based only on the opponent's earlier CTM -- which was revoked by OHIM's Cancellation Division after the Board gave its decision but before the General Court heard the appeal. Fuchs appealed, arguing that the opposition was devoid of purpose to the extent it was based on the earlier, now dead, CTM. No, said the court: not only could it be said that the opponent did have a legitimate interest in the opposition, but it was also the case that, since revocations don't have retrospective effect, they can't be taken into account anyway.

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Another interesting General Court ruling from early October can be found in Joined Cases T-122/13, T-123/13 and T-77/13 Laboratoires Polive v OHIM, Arbora & Ausonia SLU. Here an OHIM Board of Appeal upheld in part a set of oppositions to registration as a CTM of the word mark DODIE and two figurative signs containing the word DODIE (one in blue, shown here, the other in black and white) on the basis that they would likely be confused with earlier Spanish and Portuguese registrations of the word mark DODOT for a range of toiletries and babycare products. Said the court, setting aside the Board's decisions, the diphthong "ie" was unusual both in Spanish and in Portuguese. What's more the intonation and rhythm likely to be adopted by any Iberian trying to pronounce that word would be markedly different from the more familiar "ot" of DODOT. These differences reduced the visual and phonetic similarity to such a degree that no likelihood of confusion would arise in the minds of the relevant public.  There was also the small matter of a rabbit which -- contrary to the opponent's argument -- could not be said to be a negligible part of Laboratoire Polive's marks, even though the word itself remained the dominant element [hint to CTM applicants: maybe a smaller font and a more dominant rabbit are advisable in instances such as this ...].

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Trade mark oppositions:
don't expect a quick result

Says Merpel: in the first case the opposed CTM application was filed in December 2006; that's nearly eight years ago.  In the second case, the opposed application was filed more recently, this being just four and a half years ago.  In terms of litigation a few years is no big deal -- but in terms of businesses and their commercial plans, it's a hugely long time.  Merpel continues to believe that, for the sake of businesses and the markets in which they trade, oppositions based on likelihood of confusion alone should never be allowed to grind along at a snail's pace. She repeats, endlessly, something that other Kats have said from time to time: we are not talking about something as profound and technically difficult to resolve as the relationship of the claims in a patent to possibly relevant prior art: we are talking about whether, for example, the use by two different businesses of, in one case, the word DODOT and a logo with a rabbit and, in the other case, the word DODIE are likely to confuse purchasers of toiletries and babycare goods.

Not amused; confused

If the test of likelihood of confusion is treated as an issue of fact and not treated to some pseudo-scientific regime of legal tests and formulae which -- though we are used to them -- appear ridiculous to the layman, we can fast-track oppositions and deal with them in a matter of weeks, if not days. It would be great if some trade mark-granting office could experiment by setting up an opposition "hit squad" to tackle each opposition as soon as it arises, getting the parties together on Skype (or some other conferencing medium) and assembling a sample panel of relevant consumers who can act as guinea pigs when shown the marks and say "yes, we are confused" or "don't be so silly!"