Opposition Decisions regarding Trademarks consisting of Several Elements

Opposition Decisions regarding Trade Marks consisting of Several Elements

Kador & Partner, Munich, Germany, by Dr. Utz Kador

1. Likelihood of Confusion

In the decision 908/2000 "ORO ./. ORO CAFFE (device)" (22/05/2000) it was stated that the word "ORO" is the dominant element and both trademarks will be pronounced as "ORO". The public would consider that all the goods in dispute derive from the same or related enterprises. Therefore, there is a likelihood of confusion including a likelihood of association.

In the decision 1072/2000 "ATLANTIC BAR AND GRILL ./. ATLANTIC EXCELLENCE" (25/05/2000) it was found that "ATLANTIC" is the dominant and distinctive element in both marks and the other elements of the trade marks are descriptive. Therefore, it was concluded that there is a likelihood of confusion.

In the decision 1082/2000 "BRIDGE ./. THE BRIDGE WAYFARER (device)" (26/05/2000) it was stated that the marks are identical as far as the word "BRIDGE" is concerned. The differentiating element consists of the word "WAYFARER" and the accompanying device. Still, it has been found that these additional features are of secondary importance both in the visual and phonetic appreciation of the sign so that there is a likelihood of confusion.

Similarly, in the decision 1376/2000 "SURPRISE ./. ICECREAM SURPRISE (device)" (27/06/2000) the word "SURPRISE" is contained in both signs. The visual difference is not deemed sufficient to counteract the strong resemblance caused by the identical feature of the marks.

In the decision 1100/2000 "SUGAR PLANTATION (device) ./. SUGAR" (31/05/2000) it was found that the word "SUGAR" is highly distinctive. Since it is the first part of the earlier trade mark it will be remembered easily and readily by consumers so that they will focus on the beginning of the mark. Therefore, both marks show some visual and phonetic similarities which is compounded by conceptual similarity in those member states in which the meaning of the marks is understood.

Again, in the decision 1446/2000 "X-CEL ./. XCELL Technology" (30/06/2000) it is found that in general the consumer pays more attention to the beginning of a trade mark. In an overall assessment including visual, phonetic and conceptual elements the marks are deemed to be similar.

2. No Likelihood of Confusion

In the decision 1247/2000 "LIFE ./. METROPOLITAN LIFE" (15/06/2000) it was stated that the marks are identical as far as the word life is concerned. However, it was judged that the common part "LIFE" is not sufficient to conclude that the marks are confusingly similar.

Similarly, in the decision 1288/2000 "DONUT ./. DOONY'S DONUT" (20/06/2000) it was found that the fact that two trade marks share one element is not sufficient to give rise to a likelihood of confusion. The second element of the application is simply a description of the goods and the average consumer is likely to use the first element. The marks were thus not found confusingly similar.

In the decision 1453/2000 "FLYING HORSE, FLYING HORSE (device) ./. FLYING BULL" (30/06/2000) it was found that there is no visual and conceptual similarity. The common element FLYING is an adjective and from a phonetical point of view nouns are more important so that the words HORSE and BULL were not found confusingly similar.

In the decision 1459/2000 "ARTIST ./. ARTIX Personal Computer (device)" (30/06/2000) it was stated that the word "ARTIX" is the dominant element whereas the words Personal Computer are negligible and have no decisive importance. The words "ARTIST" and "ARTIX" differ substantially in pronounciation. The marks are also conceptually different since "ARTIST" has a clear meaning in Germany which is the relevant territory. Thus, there is no likelihood of confusion.

In the decision 1457/2000 "BERKSHIRE (device) ./. Royal Berkshire POLO CLUB (device)" (30/06/2000) it was stated that even though both marks include the word "BERKSHIRE", they are not found to be visually similar because the dominant word element of the contested mark is POLO CLUB. Both marks are phonetically identical as far as the word "BERKSHIRE" is concerned, but in an overall assessment the marks are not phonetically similar. In addition, an identical feature does not make the marks conceptually similar. Thus, the marks are deemed dissimilar so that there is no likelihood of confusion.

3. Comments

As it can be seen from the "GALA"-, "CRUGI", "CHEF"-decisions as well as from the "ORO", "ATLANTIC" "SURPRISE" and "SUGAR" -decisions on the one hand, and the"Almaril" "Rio Bravo", "LIFE", "DONUT" and "FLYING HORSE" decisions on the other hand, the decisions have to be harmonized as there are still different solutions of similar conflicts.