GENERAL COURT OF THE EUROPEAN UNION - 5 DECEMBER 2013 - CASE T-394/10 - ELENA GREBENSHIKOVA VERSUS OHIM (VOLVO TRADEMARK) - "SOLVO V. VOLVO"
Mrs Grebenshikova filed a Community trade mark application for a trade mark covering “computer programmes for stock management systems and computer programmes for container terminal systems” in Class 9.
Volvo Trademark filed a notice of opposition against this trade mark application on the grounds of its prior verbal Community VOLVO trade mark notably covering "computer software" in Class 9.
The Opposition Division rejected the opposition on the grounds that the signs at issue were not similar, which the Board of Appeal upheld.
The General Court of the European Union annulled this decision, holding that there was a phonetic similarity between the signs, and referred the case to the Board of Appeal for a general assessment of the likelihood of confusion.
The Board of Appeal, seized once again, annulled the decision of the Opposition Division and allowed the opposition.
It stated in particular that:
- "Even though the earlier trade mark is not renowned with regard to “computer software”, its reputation in the field of cars means that it has a more distinctive character in the field of information technology products such as software, particularly as most vehicles use computer software"
- "The visual perception of the marks at issue does not outweigh their phonetic aspect given that the choice of software could be made visually or by means of an oral order, and that the trade marks at issue are not always perceived visually prior to purchase, because it is the content, rather than the visual aspect of the software, which is the decisive factor in the act of purchase"
- "The visual differences can not outweigh the phonetic similarities in such a manner as to exclude a likelihood of confusion"
This decision was once again annulled by the General Court of the European Union, which held in particular that:
- "The software covered by the mark applied for is aimed at undertakings, is not purchased on a daily basis, may involve significant investments and constitutes an essential work tool for at least some employees, all those factors having the effect that the staff responsible for the choice of software pay particular attention when comparing goods from different producers operating on the market" and as such "the relevant public’s degree of attention must be held to be particularly high";
- "The OHIM’s argument that the software in question may be ordered orally is irrelevant since consumers will inevitably be faced with the image of the sign applied for during the selection process, with the result that the doubts which the phonetic similarities may have given rise to [...] will be dispelled by the readily perceptible visual differences which distinguish the signs at issue";
- The “visual dissimilarities outweigh the phonetic similarities between the signs at issue";
Thus, "in spite of the identity of the goods and the high degree of distinctiveness of the earlier mark, there is no likelihood that the consumers, who are particularly attentive and wish to ascertain the identity of the producer, may think that the goods covered by the signs at issue come from the same undertaking or, as the case may be, from economically-linked undertakings";
The Board of Appeal therefore erred in finding that a likelihood of confusion existed.