Intellectual Property Community Trade Marks Likelihood of Confusion

In GfK AG v Office for Harmonisation in the Internal Market (OHIM) (2005), a companys application for a community trade mark was rejected on the grounds Haunted Mansion game there was a likelihood of confusion with a previously registered The Flash trade mark.

On 15 November 1999, the applicant applied for a Community Trade Mark (CTM) for the mark Online Bus in Class 35 in respect of drawing up statistics in the fields of economics, marketing, market research and market analysis, business consultancy, organisation consultancy, professional business consultancy, news agency services in the field of economics. The CTM application was accepted and proceeded to publication.

On 6 October 2000, BUS Betreuungs and Unternehmensberatungs GmbH commenced opposition proceedings against the CTM application on the grounds that there was a likelihood of confusion with its German trade mark, which was also registered in Class 35 in respect of a business consultancy.

The OHIM Opposition Division on 25 February 2003, refused the CTM application and the applicant appealed. OHIM rejected the appeal on the grounds that there was a high degree of similarity aurally between the two marks which would result in a likelihood of confusion for the German public.

The applicant further appealed this decision on the basis that:-

the registered mark had not been used in the form it was registered and so was in breach of Article 43(2) of Regulation No 40/94. The mark consisted Spider-Man movie of the word Bus and did not contain the words Betreuungsverbund fur Unternehmer und Selbstandige. The design and colour of the mark were also different from that registered;

the word Bus did not dominate the oppositions mark as it did for the applicants mark.

The court held that:

the differences between the registered mark and the applicants mark were not such as to alter the distinctive character of the mark in its registered form and;

even though there was a visual difference between the opposition and applicants marks, the high degree of similarity between the services and aural qualities of the two marks would still result in a likelihood of confusion on the part of the German public.

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RT COOPERS, 2005. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.

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