The CFI has this week (on 2 December 2008) annulled a decision of the OHIM Board of Appeal by deciding that the word mark BARBARA BECKER was confusingly similar to an earlier Community trade mark BECKER under Article 8(1)(b) Community Trade Mark Regulation (40/94/EC). Both trade marks cover identical and similar "goods of a technical nature" in class 9.

While the CFI confirmed the OHIM Board of Appeal's assessment that both marks shared a certain degree of visual and phonetical similarity through their shared element "Becker", the CFI did not follow the OHIM Board of Appeal's view that both marks were conceptually different because of the importance of the extra element "Barbara" in the composite mark BARBARA BECKER and because of Barbara Becker's celebrity status in Germany (as the former wife of tennis player Boris Becker - see photo on the left), where the name Becker was also generally recognised as a widespread surname. The OHIM Board of Appeal had decided that the surname Becker was not the dominant and distinctive element because the relevant public would perceive the mark BARBARA BECKER as a whole. The OHIM Board had further argued that the relevant public would not dissect the trade mark but would rather perceive it in its entirety as the name of a woman, Barbara Becker, and neither of its components would have an independent distinctive role or would constitute the dominant element. As such, in the view of OHIM Board of Appeal the differences between both marks were significant enough to rule out a likelihood of confusion.

The CFI disagreed with this assessment and held that

"36 ... (the) earlier trade mark BECKER, and the mark Barbara Becker, refer to the same surname Becker. They are thus similar, and all the more so since in a part of the Community the component ‘becker’ of the trade mark applied for is, as a surname, likely to be attributed a stronger distinctive character than the component ‘barbara’, which is simply a first name. In that regard, it should be recalled that the relevant public keeps an imperfect picture of the marks at issue in its mind.

37 In addition, according to the case-law, when a composite mark consists of one component juxtaposed to another trade mark, that latter mark, even where it is not the dominant component in the composite mark, may still have an independent distinctive role in the composite mark. In such a case, the composite mark and the other mark can be regarded as similar (see, to that effect, Case C-120/04 Medion [2005] ECR I-8551, paragraphs 30 and 37). In the present case, it is clear that the component ‘becker’ will be perceived as a surname, which is commonly used to describe a person. It must be held that that component retains an independent distinctive role in the mark Barbara Becker.

38 It follows that, assessing globally the marks at issue and comparing them visually, phonetically and conceptually, the conflicting marks must be held to be similar. 39 Therefore, the Board of Appeal wrongly held that the conflicting marks were clearly distinct ."

42 .. (the) argument that the case-law on composite marks is not applicable in the present case because the trade mark applied for consists of a first name and a surname also cannot be accepted. The criteria for assessment of a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94, where trade marks constituted by a personal name are at issue, are the same as those applicable to the other categories of trade marks. Thus, a sign containing the first name and surname of a natural person may not be registered as a Community trade mark where this is precluded by a relative ground for refusal of registration following a notice of opposition lodged by the proprietor of an earlier trade mark (Case T-40/03 Murúa Entrena v OHIM – Bodegas Murúa (Julián Murúa Entrena) [2005] ECR II-2831, paragraphs 49 and 50)."