The General Court contines to pay its tribute to great scientists of the 16th century (for Galileo related trademarks cases, see here). In case T-417/09, Mercator Multihull, Inc. filed a CTM application for the word sign MERCATOR STUDIOS.

Poslovni Sistem Mercator d.d. filed a notice of opposition on the grounds of Article 8 (1) (b) and 8(5) CTMR on the basis of the following earlier Slovenian rights and international rights with effects in Austria and Italy  

The Opposition Division (OD) rejected the opposition holding that despite the similarity of the signs at issue, one of the conditions for applying Article 8(1)(b), namely the identity or similarity of the goods or services, was not met. The First Board of Appeal (BoA) confirmed that the services in question are aimed only at professionals, and held that the service of ‘computer programming’ was different from the services covered by the mark applied for. According to the BoA, the service of ‘computer programming’ is the “process of … writing, testing, debugging/troubleshooting, and maintaining the source code of computer programs”, whereas the services covered by the mark applied for did not involve the process of writing computer programs but dealt with the technical development of vehicles in the field of transportation.

It is true, as the OD itself acknowledges without being contradicted by the Board of Appeal, that computer programming may be used as a tool for the purposes of research, design and development of means of transport. However, that fact is not in itself sufficient to conclude that the services in question are similar. Since computer programming relates to all areas of life and business activity, it is very common for numerous services to involve the use of computers which must be programmed.

As for Article 8 (5) CTMR, there is no sufficient evidence to conclude that the mark applied for will enable its proprietor to take unfair advantage of the distinctive character or the repute of the earlier marks, nor freeloading and exploitation of the famous mark Mercator. It is clear from all the evidence filed that Mercator is a household name in Slovenia and that everyone associates it with the famous Mercator consumer goods retail stores and that there are large advertising and charity campaigns, together with the appearance of Mercator in the Slovenian media. However, in the present case, the applicant has not filed any evidence to establish that the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier marks.