The decision of the Board of Appeal of OHIM in case R2309/2014-4, just before Christmas, is an interesting example of how short word elements of device marks, may even if identical, not suffice for a likelihood of confusion ruling. The application for the mark below left, in connection with, inter alia, "Sportswear; cycling shoes; socks, gloves, t-shirts, trousers, casual jackets, functional jackets, jerseys, cycling trousers, jumpers, shirts, casual waistcoats, functional waistcoats, scarves, money belts, hats, sweatshirts; clothing, footwear, headgear" in Class 25, was greeted with an opposition by the owner of earlier national and international marks in and to the sign below right, for "Cosmetics, perfumery" in Class 3, "Handbags for women" in Class 18 and "Outerclothing for women" in Class 25.
The ground for opposition was likelihood of confusion, 8(1)(b) CTMR, and the opposition was directed against part of the goods applied for and it was based on all the goods of the earlier marks. The Opposition Division rejected the opposition in its entirety reasoning that the conflicting signs (a) are not visually similar, (b) are aurally similar insofar as they coincide in the sound of the letters ‘TR’ or ‘R’; and (c) have no concept in common. Considering that the releant goods are partly identicl and partly similar, it concluded that the differences between the two signs outweigh the similarities between them and aver risk of consumer confusion.
The Board of Appeal upheld the Opposition Division's ruling. In doing so, it went through a detailed comparison between the signs [usually a safe indication of a finding of lack of overall similraity in the case law of any Trade Mark Office]. It stated that "The contested figurative mark consists of a complex lining pattern which resembles the device of a shield or a coat of arms. This pattern consists of an outer line broadened at the upper part. Within this outer line, on a white background, an element is depicted which resembles a black slightly stylised capital letter ‘R’ and which, exactly in the middle, is crossed by a thick vertical black line. The latter is connected to the upper part of the outer line and running down almost to the bottom, but not entirely, having a diverging bottom end. [Here comes the juicy part] Only after very careful consideration this latter part may be perceived as part of a capital letter ‘T’, forming an integrated part of the outer line of the shield device. The contested mark is dominated by its very specific graphic representation which determines its distinctive character. The earlier figurative mark consists of a taut and simple lining pattern. Within this pattern one may perceive the capital letter ‘T’ followed by a black line formed by a half-oval in the upper part and a straight diagonal line in the lower part, the letter ‘R’ with an incomplete horizontal line, or the letter combination ‘TR’ in which the letter ‘R’ lacks its vertical line. Also the earlier mark is dominated by its very specific graphic representation which determines its distinctive character."
As this exhaustive comparison hints, the BoA held that "The overall impression of the two marks is completely different. This conclusion will not change in the event the letters ‘T’ or ‘R’ or a combination of both will be perceived within the conflicting marks"..."The mere fact that the marks are possibly developed from the abstract concept of the letters ‘T’ or ‘R’ or a combination of both is in itself not a ground to establish any relevant visual similarity between the marks (25/06/2015, T-662/13, M (fig.) / dm, EU:T:2015:434, § 46)". On the basis of this strongly worded finding ("completely different"), the BoA naturally held that the conflicting signs are overall dissimilar [a finding taking one or two steps further the Opposition Division's position] and there is no risk of consumer confusion.
This blogger would have thought this dispute to be open to any result, at least for the identical goods in Class 25. It is true that for this type of goods visual impression would be more important than aural (see T-292/01 Bass-Pash, para. 55) and that short signs usually make up trade marks which are tough to enforce. On the other hand "TR" is not different to "TR", so the robust language employed by the Board of Appeal was much more surprising than the result would have ever been.