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Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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THURSDAY, 6 FEBRUARY 2014
General Court: MagNext v. Magnet 4

In joint cases T-604/11 and T-292/12, the General Court was faced with the following oppostions:

Contested CTMs- Mega Brands International,

Diset SA

 1) MAGNEXT

2)

 

MAGNET 4 –earlier Spanish Mark-

 

     Earlier CTM

‘Toys and playthings, in particular multi-part construction toys, it’s parts, it’s accessories and it’s fittings’ in Class 28

‘games, toys, gymnastic and sports articles not included in other classes; decorations for Christmas trees’ in Class 28

 The Opposition Division and Board of Appeal upheld both oppositions.

In decision R-1695/2010-4, as regards the comparison of with the earlier word mark, the Board found the two signs visually similar to a certain degree and aurally similar to a medium degree.

Conceptually, the Board found that the signs are not similar: in the Spanish language the adjective ‘magnético’ is commonly used by the relevant public to designate an article with magnetic properties so it cannot be excluded, although unlikely, that the public might associate the earlier mark with objects having such properties. However, the word Magnext does not exist in Spanish and won’t be connected to any concept, thus it will perceived as fanciful.

In the overall assessment, the Board further found that the earlier word mark had an average distinctiveness: the notion of being ‘magnetic’ not being necessarily weak for the Class 28 goods. Normally they are not ‘magnetic’ and do not predominantly contain magnets.

The applicant challenged this assessment before the General Court: according to the evidence filed before OHIM, the promotion of the magnetic properties of games and toys is a common practice among operators active in the sector, including the owner of the earlier mark ( the Commission adopted Decision 2008/329/EC of 21 April 2008 requesting Member States to ensure that magnetic toys placed or made available on the market display a warning about the health and safety risks they pose). Thus, the earlier mark MAGNET4 sends a message related to the goods for which it is protected and the GC found that the Board had erred and contrary to its finding, the distinctive character was not medium but weak.

Therefore, taking into account of the very slight degree of similarity between the figurative mark applied for and the weak distinctive character of the earlier mark, the Board of Appeal made an error of assessment by recognising a likelihood of confusion between them within the meaning of Article 8(1)(b) CTMR. Even if the products covered by the marks in question are partly identical, the overall impression given to the Spanish relevant consumer is sufficiently different to avoid such a risk, also taking account of the weak distinctive character of the earlier mark.

As regards the earlier figurative mark, the Board of Appeal having found a likelihood of confusion in respect of the earlier word mark, it did not examine the opposition from the perspective of the figurative CTM reproduced above and, therefore, did not make any assessment in that regard. Consequently, the state of the proceedings does not permit final judgment to be given, so that the applicant’s application to dismiss the opposition in Case T-604/11 must be dismissed.

However, regarding decision R 1722/2011-4: since the similarity between the word mark applied for MAGNEXT and the earlier mark MAGNET4 is greater, the finding of the Board of Appeal on the likelihood of confusion between those marks must be upheld, given the identity of the goods covered by them and in spite of the weak distinctive character of the earlier mark.

Posted by: Laetitia Lagarde @ 19.10
Tags: General Court, Likelihood of confusion, magnext, magnet 4, toys,
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Reader Comments: 3
Post a Comment

Submitted By: Daniel
11 February 2014 @ 23.38
Hello, perhaps you could read the judgment. Your summary gives a completely wrong impression. It would be nice to be able to rely on summaries you post on this blog. Thanks.
Submitted By: Laetitia
12 February 2014 @ 00.24
Dear Daniel, thank you for bringing this to my attention. I will make the appropriate modifications to the summary.
Submitted By: Daniel
11 March 2014 @ 17.06
thanks. much better like this.

MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.


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