The Court of First Instance in Cases T-39/04
and T-378/04 Orsay GmbH v OHIM
ruled on 14 February 2008 that the two pink CTM applications depicted here are confusingly similar to the prior Spanish registration for D'ORSAY (below, right) for goods covered in Class 25.
Orsay GmbH applied to register the figurative marks O ORSAY and ORSAY as Community trade marks in Classes 23, 24 and 25. Jose Jimenez Arellano SA filed oppositions against these two marks, based on an alleged likelihood of confusion with (among others) its prior Spanish registration for D'ORSAY covering Classes 03, 18 and 25. The Opposition Division upheld the oppositions insofar as Class 25 was concerned, arguing that the Class 25 goods were identical and the respective signs similar. In respect of Classes 03 and 18 and Classes 23 and 24, the Opposition Division refused the oppositions on the basis that the goods were not similar.
Orsay GmbH appealed to the Board of Appeal, which affirmed the Opposition Division's decision. The BoA argued that there was a likelihood of confusion as the goods were identical and the marks significantly similar from a phonetic point of view, as well as being slightly similar visually. The BoA was concerned that consumers might see the applications as modern versions of the prior mark.
The CFI affirmed these decisions. It was undisputed that the relevant goods covered by Class 25 were identical, and the CFI agreed that the marks were similar. The element "d'orsay" comprised in the earlier mark was seen as the mark's dominant component as it could be distinguished from the visual element of the mark and the only phonetic part of the mark. The final 5 letters of the mark ("orsay") were identical to both applications.
Although the application for
also included visual elements, such as a star, the Court thought that, because of the additional elements this graphic element would not be read as the letter "O" and that the marks therefore were visually similar to some extent. But, even if the visual element was read as the letter "O", the Court argued that Spanish consumers would not pronounce it as the letter "O" as such pronunciation would be unusual in Spanish.
The visual element in the application
was thought to be read as the letter "O" -- despite the addition of the stars -- because was is situated on the same line as the remaining letters "rsay" and made the word "orsay" pronounceable.
As none of the marks had a meaning in Spanish, the Court agreed with the BoA that consumers would take greater note of phonetic and visual elements of the marks. The Court also agreed that the marks were phonetically similar - the letter "d" as included in the earlier mark would hardly be heard as the second letter "O" was pronounced openly and the letter "d" would therefore be absorbed by the letter "O". The Court accordingly agreed that there was a likelihood of confusion between the marks.