In case T-525/09, the General Court was confronted with reviewing the same trademarks than in Judgment T-290/07- only the Board of Appeal which rendered the contested decision changed- and the same result : there is no likelihood of confusion (‘LOC’) between the following trademarks
(earlier German TM) (contested CTM)
A little bit of procedural history first: the Opposition Division (in 2006) had upheld the opposition on the grounds there was LOC in Germany. The Second Board of Appeal (in 2007) annulled this decision observing in essence that in essence, that the goods and services covered by the signs at issue were identical and that the signs were visually, phonetically and conceptually dissimilar. The First Instance Court (in 2008) annulled the first decision of the OHIM holding that contrary to the Board of Appeal’s findings, there is a certain aural similarity between those signs, so that the BoA had been wrong to find that there was a complete lack of similarity between the signs at issue and not to analyse the LOC between the signs.
In the contested decision under review, the First Board (in 2009) held that, notwithstanding a certain aural similarity between the signs at issue, there was no LOC, having regard to the nature of the goods and services concerned and the way in which they are marketed.
The GC upheld this time the findings of the Office: the applicant’s mark is not similar to the earlier mark, neither visually- given the importance of the figurative element and the extra syllable- nor conceptually because the mark applied for might call to mind a fictitious place, such as ‘Metropolis’, or be regarded as a neologism, unlike the earlier mark.
The goods at issue (such as bingo machines) cannot be considered as being goods which may be purchased impulsively, but rather following a comparison between the various offers and after some reflection. The consumers will thus buy them after a comprehensive examination of their respective specifications and technical characteristics, firstly upon the basis of information that appears in specialist catalogues or on the internet, and then at the point of sale, usually with the help of a sales person, which indicates that there will be a visual examination both of the goods and of the mark which they bear.
As regards the goods in Classes 9, 20 and 28 as the applicant itself observes, that those goods, which ‘are not purchased every day, but only every few years’, are acquired on the basis of specific information which implies that the consumer will be even more vigilant at the time of their acquisition and would not only rely on his aural recollection of the mark. As for the services in Class41 (providing amusement for arcade facilities) such services are relatively expensive, such that they are acquired after reflection and comparison of the various offers.
Metronia- a real place here.
Metropolis- a futuristic place here.