TUESDAY, 8 MARCH 2011
OHIM Boards of Appeal and the letter "W"
On 14 November 2008, W-Travel AG filed a CTM application for the figurative trademark (classes 35, 36, 39, 41, 43).
Starwoods Hotel& Resorts Wordlwide Inc. opposed such application on the basis ofits earlier CTM trademarks, among which:
registered also in classes 35, 36, 39, 41, 43 and in class 37.
The Opposition Division had rejected the opposition, because of the low degree of visual and phonetic similarity between the signs.
The words “hotels”,”residence”, ”travels”, had been judged descriptive.
The letter ‘W’, shared by the two trademarks, had been considered devoid of distinctive character per se, but with a different graphic representation which dispel confusion.
Starwoods Hotel& Resorts Wordlwide Inc appealed the decision and won the case.
On 2Oth January 2011 (case R 1118/2010-1), the Board of Appeal found that in both the considered complex marks the letter “W” is in a dominant position and will predominantly catch the consumers’ attention and memory. In fact, it is placed at the beginning of the signs and it is stressed by further elements: a much bigger size and in bold typo in the earlier trademarks and a darker coloured shape and a semicircular device in the contested mark.
The Board recalled a General Court’s rule: even though a single letter is potentially devoid of distinctive character, nevertheless, when both signs include as a dominant element this single letter, this dominant letter “makes an immediate impression and it is remembered” (Judgment 13 July 2004, T-115/02).
In another case, the General Court also ruled that “it can not be affirmed generally and abstractly that mark consisting of a single letter lacks distinctiveness” (Judgment 9 July 2008, T- 302/06).
Lastly, according to the OHIM Manual of Trademark Practice, the protection of “one-letter marks” is generally sough for the specific manner in which the letter are graphically represented and not for the single letter by itself.
However, in the case at issue, the “W’ letters presented only minor graphic differences and, therefore, were not able to allow the trademarks to be distinguished.
The remaining word elements “hotels”, ”residence”, ”travels” have been found to be descriptive, with a low degree of aural similarity, but with a certain degree of conceptual similarity, since they are all referred to the general idea of ‘travelling”.
Being the services identical or similar, a likelihood of confusion, including a likelihood of association, exists in the opinion of the Board of Appeal.
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