European Union - Trademarks - Registration

Deutsche Bahn AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM): General Court of the European Union (First Chamber) (Judges Azizi, President, Cremona, and Frimodt Nielsen (Rapporteur)): 9 September 2011

In June 2001, the intervener filed a community trademark application, seeking to register the sign 'IC4'. The goods in respect of which registration was sought corresponded to the description 'transport; packaging and storage of goods; travel arrangement; travel agency activities; transport brokerage; vehicle rental; railway transport'.

In November 2005, the applicant company filed a notice of opposition to registration of the mark, based firstly on an earlier Community mark ICE, filed in April 1996, corresponding to the description: 'transport of persons and goods by rail vehicles; services in connection with the operation of a railway system, namely luggage services, luggage storage, schedule and traffic information services including those provided by electronic equipment, reservation services; arranging of railway tours, travel agencies escorting of travellers; rental of railway vehicles and brokerage of such services'.

The opposition was based, secondly, on an earlier German mark (the IC mark), which corresponded to the description 'conveyance of passengers by track railway'. The grounds relied on in support of the opposition were those referred to in article 8(1)(a) and (b) of Council Regulation (EC) 40/94. The Opposition Division rejected the opposition. The appellant appealed to the first Board of Appeal of the Office for Harmonisation in the Internal Market (OHIM), which rejected the appeal and also the opposition. The appellant appealed.

The appellant contended, inter alia, that there was a likelihood of confusion between the signs. It submitted that the court should annul the contested decision. The defendant contended, inter alia, that the court should dismiss the action. The intervener contended, inter alia, that the court should confirm the contested decision and the decision of the opposition division. The appeal would be allowed.

The global assessment of the likelihood of confusion implied some interdependence between the factors being taken into account, and in particular the similarity of the trademarks and the similarity of the goods and services concerned. A lesser degree of similarity between goods or services might be offset by a greater degree of similarity between the signs. The fact that a trademark might be distinctive in one country alone did not mean that the need to take that factor into consideration could be dispensed with (see [91], [99] of the judgment).

It was necessary to consider the following factors: (i) the degree of attention of the relevant public, which would be regarded as average; (ii) the fact that the services in the instant case were similar or identical; (iii) the fact that the marks had an average degree of visual and conceptual similarity, and limited phonetic similarity; and (iv) the ICE trademark was highly distinctive.

In most circumstances, ICE would be pronounced as a set of initials, although some English speakers might say it as a single word. On the facts, the IC4 and ICE trade marks were visually, phonetically and conceptually similar. The ICE trademark was well established in Germany. In the circumstances, the signs at issue would have an average degree of visual and conceptual similarity (see [74]-[89] of the judgment).

In the light of all the factors, the Board of Appeal had erred in concluding that there was no likelihood of confusion between the trademarks (see [101] of the judgment). Vincenzo Fusco v Office for Harmonisation in the Internal Market (Trade Marks and Designs): T-185/03 [2005] All ER (D) 20 (Mar) followed; Vitakraft-Werke Wuhrmann & Sohn GmbH & Co v Office for Harmonisation in the Internal Market (Trade Marks and Designs): T-277/04 [2006] All ER (D) 151 (Jul) followed.