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    21/02/2012 - "Earlier mark’s distinctive character is only one factor in likelihood of confusion assessment" by Richard Milchior

    In Indo Internacional SA v Office for Harmonisation in the Internal Market (OHIM) (Case T-260/08, January 24 2012), the General Court has upheld a decision of the First Board of Appeal of OHIM in which the latter had found that there was a likelihood of confusion between the marks VISUAL MAP and VISUAL.

    On July 21 2004 Indo Internacional SA filed a Community trademark application for the word sign VISUAL MAP for services in Class 44 of the Nice Classification ("Optical services, in particular design and adaptation of customised progressive lenses"). Visual SA filed an opposition under Article 8(1) (b) of the Community Trademark Regulation (40/94) based on the earlier French word mark VISUAL, which was registered for various services in Class 44 (mainly optician’s services and medical care in the field of ophthalmology, medical healthcare and beauty).

    The opposition was upheld by the Opposition Division, and the First Board of Appeal of OHIM dismissed the appeal. With regard to the relevant public, the board found that it consisted of average consumers and professionals in France. In respect of the services concerned in Class 44, it found that these were identical to the services covered by the earlier mark. With regard to the signs in conflict, the board considered them to be visually, phonetically and conceptually similar. Finally, the board concluded that the identity of the services and the similarity of the signs created a likelihood of confusion on the part of the French public.

    Before the court, Indo Internacional alleged that the board had infringed Article 8(1)(b) of the regulation.

    The court first reiterated that the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally according to the relevant public’s perception of the signs and goods or services in question, taking into account all of the factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered.

    In this case, the issue was not the similarity of the services but, rather, the relevant public for the purpose of assessing the likelihood of confusion. The relevant public is composed of users likely to average French consumer as being a variant of the French word ‘visuel’) could lead to a close conceptual similarity between the signs.

    The presence of the additional element ‘map’, which is meaningless for the average French consumer, was not such as to reduce such a similarity. The court agreed, adding that the fact that the French public may recognise in the word ‘visual’ the English equivalent to the French word ‘visuel’ was decisive. By contrast, the English term ‘map’ will not be understood as being the English equivalent of the French words ’reproduction’ or ’plan’. Therefore, there was no conceptual difference between the signs. Finally, the court turned to the global assessment of the likelihood of confusion, which implies some interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services concerned - a lower degree of similarity between the goods or services may be offset by a higher degree of similarity between the marks, and vice versa.

    In this case, the services at issue were identical. Given the identity of the services and the overall similarity of the marks, the court held that it was highly likely that, when the relevant public considered those services designated by the mark applied for, or when oral reference was made to those services by using the mark, it may attribute the same commercial origin to the services at issue. Accordingly, even if the relevant public was capable of perceiving certain visual and phonetic differences between the signs, those differences were not such as to remove the risk that a link will be established between the marks concerned.

    The court thus agreed that there was a likelihood of confusion between the marks. This conclusion was not called into question by Indo Internacional’s argument that the earlier mark VISUAL had a very weak distinctive character - although the distinctive character of the earlier mark must be taken into account for the purpose of assessing the likelihood of confusion, it is only one factor among others. Otherwise, it would be possible to register a mark, one of the elements of which was identical with, or similar to, those of an earlier mark with a weak distinctive character, even where the other elements of that mark were less distinctive than the common element and notwithstanding a likelihood that consumers would believe that the slight difference between the signs reflected a variation in the nature of the goods or stemmed from marketing considerations, and not that it denoted goods from different traders.

    Even assuming that the term ‘visual’ could be regarded as descriptive of the services concerned and that, consequently, the earlier mark could be regarded as having a weak distinctive character, the identical nature of the services covered by the marks at issue and the degree of similarity between those marks, considered cumulatively, proved to be sufficiently high in order to justify the conclusion that there was a likelihood of confusion.

    The action was thus dismissed.

    Richard Milchior, Granrut Avocats, Paris

    Source : World Trademark Review Daily


Richard Milchior