In Case T- 394/10, Ms Elena Grebenshikova filed a CTM application for the following sign for Class 9 ‘Computer programs for warehouse management systems and computer programs for container terminal systems’. Volvo Trademark Holding AB, filed a notice of opposition on the grounds referred to in Article 8(1)(b) and (5) of CTMR based inter alia on earlier CTM VOLVO which covers, inter alia, ‘computer software’ in Class 9 and ‘vehicles’ in Class 12.
The Opposition Division and Board of appeal had rejected the opposition: as regards Article 8(1)(b) CTMR, it found that the marks at issue were not similar and that, consequently, one of the conditions referred to by that provision was not satisfied. As regards Article 8(5) o fCTMR, it found that, in addition to there being no similarity between the marks at issue, there was no ‘factor common’ to both signs which might lead to the belief that there was an economic link between them.
By judgment of 2 December 2009 in Case T‑434/07 Volvo TrademarkvOHMI – Grebenshikova (SOLVO), the Court annulled the decision of the Second Board of Appeal. It held that the existence of a certain degree of phonetic similarity between the signs at issue precluded the conclusion that one of the essential conditions, namely the similarity of the signs, was lacking. In those circumstances, the BoA was ‘required to carry out a global assessment of the likelihood of confusion’.
By decision of 9 June 2010, the First BoA annulled the OD’s decision, upheld the opposition and rejected the application for the disputed trade mark. It found that the relevant public in the European Union consisted of professionals with a high degree of attention and that the goods covered by the marks at issue were identical.
Next, it based its examination of the likelihood of confusion on the Court’s finding that the signs at issue had a certain degree of global similarity based, in particular, on their similar pronunciation. E ven though the earlier trade mark did not have a reputation as regards ‘computer software’, its reputation in the field of cars meant that it had a higher degree of distinctive character in the field of information‑technology goods such as software, particularly as most vehicles use computer software.
Furthermore, the visual perception of the marks at issue did not outweigh their phonetic aspect given that the choice of software could be made visually or by an order orally, and that the visual perception of the marks at issue did not always occur prior to purchase, because it was the content, rather than the visual aspect of the software, which was the decisive factor in the act of purchase.
Therefore, the visual differences could not outweigh the phonetic similarities in such a manner as to exclude a likelihood of confusion.
The General Court annulled again the BoA’s decision. 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 regarding the commercial origin of the goods will be dispelled by the readily perceptible visual differences which distinguish the signs at issue.
Having regard to those considerations, in the present case the visual dissimilarities outweigh the phonetic similarities between the signs at issue, contrary to what the Board of Appeal found. Therefore, in spite of the identity of the goods and the high level 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.