OCTOBER 2013: CASE LAW SUMMARY
General Court of the European Union - Third Chamber, 4 June 2013 - i-content Zweigniederlassung Deutschland versus the OHIM
The German i-content company Zweigniederlassung Deutschland filed a Community trade mark application for BETWIN relating notably to different types of toys, games and playthings in Class 28.
Décathlon SA filed an opposition against this trade mark application on the grounds of its earlier Community trade mark registered in particular for "gymnastic and sporting articles (other than clothing, footwear and mats)" in Class 28.
The OHIM's Opposition Division rejected the contested trade mark application for all of the products claimed in Class 28. This decision was confirmed by the OHIM's Board of Appeal.
The General Court of the European Union confirmed that the signs were phonetically identical as well as having visual and conceptual similarities. Nevertheless, and unlike the OHIM, the General Court of the European Union held that the toys, games and playthings claimed in the contested application are not similar to the "gymnastic and sporting articles (other than clothing, footwear and mats)" covered by the earlier trade mark.
The General Court held, in particular, that:
- It is not significant to note that sporting and gymnastic articles are generally aimed at the same users as toys, games and playthings. The goods at issue are aimed at the public at large, so such an assertion does not constitute a significant factor in assessing the similarity between the products.
- Even if it cannot be ruled out that, for certain gymnastic and sporting articles, on one hand, and certain toys, games and playthings, on the other, a link can be drawn in so far as certain sporting articles can be used for games and certain games can also be sporting articles (...) such an assumption does not call into question the fact that the intended purpose of these two categories of products is essentially different. Even if, by their nature, these two categories of products are meant to entertain the public, they also serve other purposes. [...] gymnastic and sporting articles are intended to train the body through physical exercise, whereas toys, games and playthings are intended first and foremost to entertain their users.
- Finally, they are categories of products which are generally manufactured by specialist undertakings and are sold in specialist stores. Admittedly, like all other types of products, they can now be found in large retail stores. However, at such points of sale, both gymnastic and sporting articles and toys, games and playthings are sold in specialist departments which, even though they may be close, are none the less separate.
The Court therefore annulled the ruling of OHIM's Board of Appeal that the opposition was justified for the toys, games and playthings claimed in the contested application.
Décathlon's trade mark , used for bicycles, must therefore co-exist with the i-content company's BETWIN trade mark for games and toys.