In Case T-272/11, Dynamiki Zoi AE (Greece) had sought registration in 2004 for goods and services in Classes 16, 25, 28, 35, 36 and 41 for the word mark FITCOIN.
Fitcoin SpA (Italy) brought an opposition on the grounds of Article 8 (1) CTMR on the basis of earlier figurative CTM’s, Italian and international rights registered for goods and services in the same classes, among others
In a previous judgment from 2010, the General Court held that by taking account only of earlier Italian marks and by finding that there was no likelihood of confusion on that basis alone the Board of Appeal had infringed Article 8(1)(b) of CTMR (Fitcoin T-249/08) because it did not examine earlier trade marks enjoying protection outside Italy and covering goods and services which are essentially identical to those covered by the earlier Italian marks, invoked by the Applicant.
In the contested decision, the BoA upheld the opposition regarding the following goods and services: Class 28: ‘Gymnastic and sporting articles (except clothing)’; Class 41: ‘Sporting activities, gymnasiums; providing information on the aforesaid services via the Internet’.
As regards the comparison of the marks, the BoA found that some marks at issue were visually different and phonetically similar to a weak degree, namely with several earlier Italian and Community figurative marks coin and earlier international registrations coin.
Conceptually it noted that the word ‘coin’ would be understood by English‑speaking consumers as meaning ‘a metal disc used as money’ and by French‑speaking consumers as ‘place, corner’ and that the word ‘fit’ was an English word meaning ‘to be of the correct size or shape’ or ‘in good health.’ It considered that some of the relevant consumers could perceive the element ‘fitcoin’ as a juxtaposition of the words ‘fit’ and ‘coin’ whereas other consumers will perceive the mark Fitcoin as a word with the prefix ‘fit’, as a word with the suffix ‘coin’ or as an invented word lacking any meaning.
As regards the likelihood of confusion, the degree of attentiveness of the relevant public is high for the services in Classes 35 and 36 and for the education services in Class 41.
For the relevant consumers who did not understand the words ‘fit’ and ‘coin’, there was no likelihood of confusion even for identical goods and services
In the present judgment, the GC held that the BoA should have found that the word ‘fit’, in the sense of ‘to be of the correct size or shape’, has a limited distinctive character as regards the ‘clothing, including footwear and slippers’ in Class 25 and consequently, the similarity between the marks at issue due to their common element ‘coin’ is not counteracted by the presence of the element ‘fit’ in the mark applied for.
The BoA therefore erred in finding that there is no likelihood of confusion, for English consumers, as regards the ‘clothing, including footwear and slippers’ in Class 25, covered by the mark applied for.
Consequent, the action must be upheld in part and the contested decision annulled in part.