FRIDAY, 15 FEBRUARY 2008
French steel industrialists vulnerable to confusion
Here's more about Case T-189/05 Usinor SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs)(OHIM), Corus UK Ltd Intervening , which Class 46 mentioned yesterday.
Corus applied to register GALVALLOY as a Community trade mark in Class 6 for 'steel sheet and strip, steel sheet and strip having a protective coating'. An opposition was filed, based on an alleged likelihood of confusion with the earlier French trade mark GALVALLIA in Class 6 for 'metals, in particular steel sheets coated with an iron-zinc alloy'. The Opposition Division rejected the opposition on the grounds that it could not establish whether the earlier mark had actually been renewed, whether it still belonged to the original applicant or whether it had been the subject of a properly registered transfer. The Second Board of Appeal annulled the decision of the Opposition Division and remitted the case. Subsequently the opponent was wound up and its assets were acquired by Usinor. When the Opposition Division heard the opposition again it allowed it on the ground that there was a likelihood of confusion in respect of all the goods covered in the opposition. Corus then appealed and this time it was the First Board of Appeal that annulled the decision, rejecting the opposition since the respective signs were too dissimilar to generate a likelihood of confusion, particularly given the very low level of distinctiveness of the earlier mark and the characteristics of the international steel market.
Usinor's appeal to the CFI was upheld. According to the CFI, the relevant market was made up of a limited number of professionals specialising in the French special steels industry market, who had a high level of knowledge of the market and who paid particular attention to the choice of products offered by each manufacturer. The marks were visually, phonetically and conceptually similar. The common prefix 'galva' was likely, as regards the relevant public, to carry a suggestive connotation in respect of the goods concerned, to the effect that they had undergone a process of galvanisation. The same applied to the suffixes 'alloy' and 'allia'. Nevertheless, although the distinctive character of the earlier mark had to be taken into account when assessing the likelihood of confusion, it was only one factor among others involved in that assessment. Since the parties' goods were identical and there were significant visual, phonetic and conceptual similarities between the marks , it could not be ruled out that even an attentive public such as the relevant public in this case could be led to believe that the goods in question had come from the same undertaking or economically-linked undertakings, despite the limited distinctiveness of the earlier mark.
Posted by: Jeremy Phillips @ 09.05
Tags: likelihood of confusion,