Trademark

In October 1999, the applicant company filed an application for registration of a community trademark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) 40/94 (on the community trademark), as amended (replaced by Council Regulation (EC) 207/2009 (on the community trademark) (Regulation 207/2009). The mark in respect of which registration was sought was the word sign ‘BOOMERANG’.

The services in respect of which registration was sought fell within Classes 38 and 41 of the Nice Agreement (concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended), In November 2000, Mr Pedro Ricote Saugar and Mr Jose Matias Abril Sanchez filed a notice opposing the registration of the mark for all the services specified in the application for registration.

The opposition was based, in particular, on the Community figurative mark, filed on 3 May 1999 and registered on 23 October 2009, under for ‘film and recording studios, rent of videos, concourse (scattering), installation of television and radio programmes; production of films’, in Class 41. The ground relied on in support of the opposition was article 8(1)(b) of Regulation 207/2009. On 16 January 2008, the earlier mark was transferred to the intervener company. By decision of 26 January 2011, the Opposition Division found that there had been a likelihood of confusion and upheld the opposition. The applicant’s appeal against that decision was dismissed by the Second Board of Appeal of OHIM (the contested decision).

The Board concluded that there had been a likelihood of confusion within the meaning of article 8(1)(b) of Regulation 207/2009, even though certain consumers might have a higher than average level of attention. The Board further noted that the new evidence adduced by the applicant had not demonstrated the peaceful coexistence on the market of the conflicting marks. The applicant brought an action before the General Court of the European Union (the General Court), seeking annulment of the contested decision.

The applicant raised a single plea in law, alleging infringment of article 8(1)(b) of Regulation 207/2009. In that respect, the applicant disputed the Board’s assessment that the services covered by the conflicting marks had been directed at both professionals, whose level of attention was high, and the general public, whose level of attention was average. The applicant submitted that the services referred to by the mark applied for were directed to the general public, which would be reasonably well-informed, observant and circumspect, whereas the services covered by the earlier mark were directed at a more specialised public, namely, to individuals and business entities involved in the production and commercialisation of films, with a high level of attention, and not to the general public.

The action would be dismissed.

(1) In order to assess the similarity between the goods or services in question, it was necessary, according to settled case law, to take into account all the relevant factors relating to the way in which those goods or services were connected; those factors included, in particular, their nature, their purpose, their method of use and whether they were in competition which each other or were complementary, goods or services which were complementary being those where there was a close connection between them, in the sense that one was indispensable or important for the use of the other in such a way that customers might think that responsibility for the production of those goods or provision of those services lay with the same undertaking.

Further, according to the case law, the global assessment of the likelihood of confusion implied some interdependence between the relevant factors, and in particular a similarity between the trademarks and between the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services might be offset by a greater degree of similarity between the marks, and vice versa (see [26], [41] of the judgment).

In the instant case, the only services covered by the earlier mark that had been taken into consideration by the Board when it had compared the services covered by the conflicting marks were film production services. Film production services were aimed solely at professionals in the audiovisual sector. Although the general public watched the films produced, it did not itself use film production services. Accordingly, the Board had been wrong to take the view that he film production services covered by the earlier mark had also been addressed to the general public.

Consequently, in accordance with the relevant case law, the relevant public, which the Board ought to have taken into consideration when assessing the likelihood of confusion, consisted of professionals. However, when it was taken into account that the services in question might be supplied by the same undertakings and that they were complementary from the point of view of those who received the services, the Board had therefore been correct to take the view that the services covered by the mark applied for, in Classes 38 and 41, and the services of ‘production of films’, in Class 41, covered by the earlier mark had a degree of similarity. As regards the comparison of the signs, the applicant did not dispute the Board’s finding that the conflicting marks were similar.

Taking into account that the services in question were similar and that the conflicting marks were similar, the Board had found that, even though certain consumers might have a higher than average level of attention, a likelihood of confusion within the meaning of article 8(1)(b) of Regulation 207/2009 could not be excluded. It followed that the Board had found that there had been a likelihood of confusion both for the general public and for the part of the relevant public composed of professionals wih a high level of attention. In agreement with the Board, owing to the existence of a strong similarity between the conflicting marks and the similarity between the services in question, there was a likelihood of confusion for professionals.

Consequently, the error which the Board had made in including the general public in the definition of the relevant public had no consequence for that finding. The applicant had put forward no argument capable of calling into question that finding of he existence of a likelihood of confusion (see [21], [22], [24], [25], [35], [40], [43], [44], [46],[59], [60] of the judgment).

(2) It was clear from the caselaw, that a person opposing a mark was required to demonstrate that the coexistence of the marks on which it relied had been based on the absence of a likelihood of confusion on the part of the relevant public (see [56] of the judgment).

The Board had been correct to consider that that evidence in question had been insufficient to demonstrate the coexistence of the conflicting marks. It was sufficient to state, as the Board had found, that that evidence related solely to the mark applied for, but gave no indication of the way in which the relevant public had encountered the conflicting marks on the market and the services for which they had been used. Nor could use of the signs on the market be inferred from the national registers, and the affidavit from the applicant itself was disputable evidence which was not substantiated by additional evidence from independent sources. It followed that the single plea, alleging infringement of article 8(1)(b) of Regulation 207/2009, would be rejected (see [59], [60] of the judgment).