A little bit of Nicky Noky ...
The Court of First Instance (CFI) has posted its decision in Case T-396/04 Soffass SpA v OHIM, Sodipan, SCA intervening, on the Curia website this morning. Soffass applied to register as a Community trade mark the varely figurative word NICKY for ‘articles made of paper and/or cellulose for household and cleaning purposes, such as handkerchiefs, face cloths, hand towels, napkins, kitchen towels on rolls or spools, toilet paper’ in Class 16. Sodipan opposed, citing its earlier French registration of its NOKY figurative marks for various products in Class 16, including toilet paper. Deeming the marks to be quite different, the Opposition Division did not consider the degree of identity or similarity of the goods or proof of use of the earlier marks. The Board of Appeal, finding that there was some similarity between the marks, ordered that the case be remitted to the Opposition Division for further consideration. Soffass appealed.
The CFI dismissed the appeal, holding that even if there is a very slight degree of similarity between the marks it is necessary to make a global appreciation of the likelihood of confusion. As to the similarity of the marks in this dispute, the CFI said:
"34 As regards the visual aspect, it must be held that there is a certain similarity between the marks at issue. Three of the four letters of the mark NOKY are found in the same place in NICKY. The marks have the first letter ‘n’ and the ending ‘ky’ in common. Since that ending is not usual in the French language it may be regarded as the dominant element in the two marks which draws the attention of French consumers.The IPKat makes no comment as to the slight degree of similarity - which appears to relate to the marks as words rather than as figurative marks - but he does take exception to para.27 of the CFI's ruling, which reads:
35 As regards the phonetic aspect, there is a further similarity between the marks concerned as the last syllable ‘ky’, which is identical in the two marks at issue, draws the attention of French consumers. Therefore, the first syllables of those signs, which differ from each other, have less impact phonetically.
36 In that regard, it must be recalled that according to the case-law, the degree of aural similarity between the two marks is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually perceives visually the mark designating those goods ...
37 Likewise, conceptually, it is possible ... that the word ‘Nicky’ may be perceived by French consumers as a diminutive of the first names Nicolas or Nicole. The importance of that argument is, in part, influenced by the nature of the goods concerned and the circumstances in which they are marketed. Accordingly, the assessment of that argument cannot be separated from the other factors which may be relevant".
"27 ... if the signs are completely different it is possible in principle, without examining the goods in question, to take the view that there is no likelihood of confusion".What does "possible in principle" mean? The Community Trade Mark Regulation makes no provision for opposing an application by reference to a mark which is completely different, does it? and if the marks are completely different, why waste expensive time and valuable effort in making unnecessary comparisons?
Last week the IPKat posted a blog on Case T-154/03 Biofarma v OHIM, Bausch & Lomb intervening. He has now received this comment from a well-informed if anonymous source:
"I think you missed the point of the Alrex/Artex case. It should be remembered that both products are only sold under prescription. Therefore it would seem that the relevant public is a specialised public, trained to distinguish pharmaceutical trade marks, as pointed out by the Board. However, to the contrary of what you said, the CFI referred not only to the specialists, but also, in paragraph 45, to the general public - since end-users would take the products at home. Therefore likelihood of confusion had, according to the CFI, to be measured in view of the possible consumer, although that person has no influence on the choice between different products (function of origin).The IPKat agrees that the position of the end-consumer would be difficult to square with the relevant considerations of trade mark law if he had no input on the purchasing decision of the pharmacist or physician. However, end-users do influence purchasing decisions: they ask for products because their friends or relations have previously taken them successfully, or they ask not to have them prescribed because they do not like them and react adversely to them.
But why should the end consumer be relevant, if public health reasons are not part of the relevant considerations and if he does not take the decision which product to buy? Or to turn the question around: pharmaceutical trade marks correspond to a world of its own. They are so difficult for the general public to remember. Most of them will be easily confused by the end consumer. So, in the future, hardly any new trade mark application will pass the test of likelihood of confusion?"