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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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WEDNESDAY, 17 SEPTEMBER 2014
Battle of the stars in General Court

 In Case T-199/13, the General Court reviewed the following opposition brought on the grounds of Article (8) (1) b) and 8 (4) CTMR:

 

DTM Ricambi srl -

 contested CTM


Società trasporti automobilistici regionali SpA (STAR)-

International and Italian marks

 Image not found

 Image not found

Classes 7, 9  and 12 including “ Vehicles; Apparatus for locomotion by land, air or water.” and “Machine coupling and transmission components (except for land vehicles)”

Classes 12, 38, 49 and 42  including “various motor vehicles; Apparatus for locomotion by land, air or water ”

 

Both the Opposition Division and 1st BoA upheld the opposition on the basis of Article 8 (1) b) CTMR.

The relevant public is composed essentially of specialist professionals.

The products covered by the marks at issue, in so far as Class 12, are substantially identical. The goods in Classes 7 and 9, as indicated in the contested CTM, are very similar to some of the goods listed in Class 12 covered by the earlier marks. The General Court found that the BoA had erred where it qualified as identical, and not as strikingly similar, engines for aircraft and watercraft, couplings and transmission components, and the "constituent parts for ships and aircraft”.

Regarding the similarity between the marks at issue, visually, they have a weak degree of similarity (different font and figurative elements), while they were are phonetically similar and identical from the conceptual point of view -for the public who may understand “lodi” (praise), it would perceive the star element as a metaphor for the identical positive attribute.

Further, the alleged weak distinctive character of the earlier international trade mark, relied on by the applicant, was not sufficiently demonstrated by the latter for the territories concerned; in any case, the weak distinctive character of the earlier international trade mark was one of the factors but not the only one, to be taken into account for the purposes of assessing the likelihood of confusion.

Finally, in the global assessment of the likelihood of confusion, that high degree of similarity, if not identity, of the products concerned compensate, in accordance with the principle of interdependence of the factors taken into account in assessing the likelihood of confusion, the low degree of similarity between the marks, and even a professional who would confuse the marks at issue.

Last but not least, it is irrelevant the argument that the earlier international trade mark is used by the opponent in a commercial sector completely different from that of the applicant. In the context of opposition proceedings, OHIM may only consider the list of products required as stated in the application of the mark in question.

Posted by: Laetitia Lagarde @ 12.38
Tags: General Court, likelihood of confusion, Star, star lodi,SocietÓ trasporti automobilistici regionali ,
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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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