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TUESDAY, 8 FEBRUARY 2011
OHIM Boards of Appeal: naughty decision about the comparison of goods

On 19 June 2008, Jo Malone Inc. sought to register the Community Trademark JO MALONE for various goods and services, among those, goods in Class 20: “Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum, and substitutes for all those materials, or of plastics” and Class 35: “Retail services in relation to home furniture”.

Jorge Pajares Calvo opposed such application on the basis of its earlier Spanish trademark MALOTE, registered for a limited number of items in Class 20: “All kind of cupboards, especially cloth detachable cupboards”.

The Opposition Division had found that there was a likelihood of confusion between the marks, given the identity and similarity of the concerned goods and the visual and aural similarity between the signs. In the judgment of the Opposition Division, these elements prevailed on the conceptual diversity between the signs (MALOTE is a colloquial Spanish expression meaning “bad, naughty guy”, or “young delinquent”).

With a decision issued on 25 November 2010 (R-0776/2010-1), the OHIM Court of Appeal overruled the decision.

The Board judged that, taking into account the relevant public (the Spanish consumers), the marks were neither visually nor aurally similar.

Moreover, MALONE has no specific meaning in Spanish, and for a part of the Spanish public it sounds as a foreign name, while MALOTE is perceived by the Spanish public as a colloquial expression for “nasty guy”.

The Board considered the marks at issue as different in their overall impression.

About the comparison of the goods, the Board stated that “furniture” in the application includes and is, therefore, identical to, the goods protected by the earlier trademark, “all kinds of cupboards, especially cloth detachable cupboards”.

Since cupboards are made of woods, wicker, can or plastic, also “goods of wood, wicker, can or plastic” include the opponent’s “all type of cupboards” and the goods are identical, while “Retail services in relation to home furniture” are similar.

To the contrary, cork, reed, horn, bone, ivory, whalebone, shell amber, mother-of–pearl, meerschaum and substitutes for those materials are not the primary material from which cupboards are customarily made. Goods of such materials serve “a decorative and no utilitarian purposes”, unlike a cupboard.

Mirror, picture frames” also differ entirely in nature and intended purpose from “all type of cupboards” and have a different appearance.

The Board judged that “mirrors, picture frames and goods made of cork, reed, horn, bone, ivory, whalebone, shell amber, mother-of –pearl, meerschaum and substitutes for those materials” are “likely to be situated in completely differ areas and can not be found to be similar (only) because they may be sold to the general public in the same stores where a very wide range of household goods may be sold”. Accordingly, with respect to the mentioned goods, there can not be likelihood of confusion.

The Board gave the same judgment also in respect to the goods that it found identical (“furniture” and “goods of wood, wicker, can or plastic”), and similar (“retail services in relation to home furniture”) to the opponent’s “cupboards”: the clear difference in the conceptual meaning, as well as the visual and phonetic dissimilarities of the conflicting marks, were considered enough to avoid a likelihood of confusion as to the commercial origin of goods.

Posted by: Benedetta Cordovado @ 20.30
Tags: OHIM Board of Appeal, likelihood of confusion, comparison of goods,
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