The Court of First Instance this morning handed down its decision in Case T‑36/07, Zipcar, Inc v Office for Harmonisation in the Internal Market, Canary Islands Car, SL. Zipcar applied to register as a Community trade mark the word ZIPCAR for, among other things, 'arrangement of travel and transportation; transportation reservation services; motor vehicle sharing services; vehicle rental; arrangement of rental of vehicles; vehicle rental reservation services; scheduling, planning, organising, managing and providing the temporary use of motor vehicles; information, advisory and consultancy services relating to the foregoing’ in Class 39. Canary Islands Car gave notice of opposition, citing its earlier Spanish registered word mark CICAR for ‘vehicle rental reservation services’, also in Class 39. The Opposition Division allowed the opposition on the ground that the marks were similar, the services were identical and there was a likelihood of confusion. Zipcar appealed to the Second Board of Appeal, which dismissed the appeal, observing last that, while the marks were not visually similar and had no conceptual content, they were very similar phonetically: since the majority of car rental contracts were entered into over the telephone, the phonetic aspect was critical in this case. Zipcar appealed, arguing that the marks had conceptual content which was quite clearly different:

"... CICAR, composed of the elements ‘ci’ (abbreviation of ‘Canary Islands’) and ‘car’ (an English word also understood by the average Spanish consumer), suggests motorised transport services on the Canary Islands or brings to mind the word ‘cigarro’(cigar). ... ZIPCAR, composed of the elements ‘zip’ and ‘car’ suggests rapid and/or convenient transport services or brings to mind the words ‘zipizape’ (hubbub) or ‘ziper’ (zip)...".

"... since the conflicting marks were composed of terms which did not exist in Spanish and which therefore had no conceptual content for the relevant public in this case, no conceptual comparison of the marks could be made. Moreover, the average Spanish-speaking consumer’s knowledge of English cannot be regarded as sufficiently extensive and sophisticated to enable him to recognise the evocative meaning relied on by the applicant (‘Canary Islands car’ for CICAR and ‘rapid and/or convenient transport services’ for ZIPCAR). In addition, the link which, according to the applicant, exists between the earlier mark and the Spanish word ‘cigarro’ is too weak both phonetically and conceptually to produce a conceptual content or an evocative meaning. ...".

"While there is no doubt that the services in question may be chosen by sight, it is equally undeniable that a not insignificant proportion of car rental contracts are negotiated orally. Moreover, on any view of the matter, it must be pointed out that car rental suppliers are recommended and chosen orally in a significant number of cases. Consequently, while it is true that the potential customer of the services in question may encounter the visual representation of the mark first, the phonetic element may play a decisive role in his choosing the services in question, in particular as regards services, amongst those covered by the mark applied for, which are not limited to car rental in the strict sense".