Legal Updates - IP case on opposition proceedings (Golam v OHIM)

Intellectual Property – Golam v Office of Harmonisation in the Internal Market (Trade Marks and Designs) - Likelihood of Confusion – Trade Mark Infringement

In the recent case of Golam v Office of Harmonisation in the Internal Market (Trade Marks and Designs) [2014] All ER (D) 34 (Apr), the General Court of the European Union (First Chamber) dismissed an action that was brought against the decision of the Fourth Board of Appeal of OHIM relating to opposition proceedings.

Background

In March 2010, Ms Golam (“G”) applied for registration of a figurative sign FOCUS as a Community trade mark in respect of goods in class 25 of the Nice Agreement (clothing, shoes and headgear);
The company Cycle Werke GmbH (“CW”) opposed the application based on an earlier registered German word mark FOCUS in respect of goods in class 25 (clothing, shoes and headgear). The mark was registered on 19 April 1994;
The grounds for CW’s opposition were those set out in article 8(1)(b) of the Council Regulation (EC) No 207/2009 (on the Community trade mark) (the “Regulation”)

1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

…

(b) if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark

The Opposition Division upheld the opposition for the following reasons:
- The goods covered by the marks at issue were identical;
- The visual, phonetic and conceptual similarities between the signs outweighed their dissimilarities; and
- Could induce at least part of the relevant public to believe that the goods concerned came from the same or economically-linked undertakings.
G appealed against the Opposition Division’s finding and the Fourth Board of Appeal of OHIM (the “Board”) subsequently rejected G’s appeal because the dissimilarities between the signs did not outweigh the significant similarities between them, as the goods were identical. As such, the dissimilarities could not safely exclude a likelihood of confusion in the minds of the consumers of goods in class 25.
G brought proceedings before the General Court of the European Union seeking an annulment of the Board’s decision to reject G’s appeal.

Outcome

In reaching its decision, the court emphasised the importance of carrying out a “global assessment” and that this implies some interdependence between the factors taken into account;

The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa.

The court held that:

The Board was correct in its finding that there had been a likelihood of confusion between the signs at issue in so far as they both covered goods in class 25;
It was possible for the Board to conclude that there was a likelihood of confusion, given the cumulative consideration of the degree of similarity of the marks as well as the identity of the goods (class 25) covered by the marks;
G’s action should be dismissed.

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© RT COOPERS, 2014. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.