In the case of Hultafors Group AB (Hultafors) V OHIM (Case T-537/11, April 19 2013), the decision of the Fourth Board of Appeal was upheld by the General Court confirming that there was a likelihood of confusion between a figurative Community trademark application incorporating the word ‘SNICKERS’ and an earlier Italian registration for the word mark ‘KICKERS’ in Class 25. Both marks covered goods including ‘clothing, footwear and headgear’.
In March 2004, Hultafors filed the following application in classes 08, 09 and 25. The application was successfully opposed by Società Italiana Calzature SpA, under Article 8(1)(b) and (5) of the Community Trademark Regulation (207/2009) on the basis of its Italian word mark ‘KICKERS’.
In December 2010, Hultafors filed an appeal with OHIM but this was dismissed by the Fourth Board of Appeal who confirmed that the Opposition Division were correct to conclude that there was a likelihood of confusion between the marks.
Case before the General Court
Hultafors appealed to the General Court and relied upon on a single plea alleging infringement of Article 8(1)(b).
It argued that the signs at issue are not visually, phonetically or conceptually similar, that the mark applied for has a high distinctive character and that there is therefore no likelihood of confusion within the meaning of Article 8(1)(b) .
Hultafors argued that as consumers paid attention to both the mark and the product, they will be able to remember every minor difference between two similar marks for identical products. They further argued that words ending in ‘ickers’ are not uncommon and that the consumer’s attention is directed towards the beginning of the words. They argued that the signs did not create a similar phonetic impression and that the intonation and stress of the earlier mark was different from those of the mark being applied for, the latter being pronounced with a distinctly voiced ‘s’ and clear stress on the initial letter of the first syllable. Hultafors further claimed that the average Italian consumer would be aware of the term ‘kicker’ and its plural form ‘kickers’ but would not know the meaning of the word ‘snickers’. As such, Hultafors claimed that the mark applied for was highly distinctive and dissimilar to the earlier mark.
Whilst the court agreed that the word ‘snickers’ was not known by the average Italian consumer, it disagreed with the remainder of Hultafors’ submissions finding that, when a mark is composed of word and figurative elements, the former should be considered more distinctive than the latter, since the average consumer will refer to the goods in question by citing the word elements over the figurative elements, Wassen International v OHIM (Case T-312/03), Paragraph 37. The court said that even if part of the relevant public shows a higher level of attention when buying the goods, Hultafors had failed to demonstrate that this concerns all of the relevant public.
The court reaffirmed the decision of the Board of Appeal. It confirmed that the word element ‘Snickers’ was the dominant element of the mark applied for and that the figurative element had a low degree of distinctiveness and would be perceived as decorative. It found that the signs coincided in six letters out of seven and eight respectively and that the signs displayed an average degree of visual similarity. In its phonetic comparison, the court stated that the average consumer will not stop at the first letter of the marks, but will consider at least the first syllable. As the following letter was ‘I’ in both marks, the first syllables were similar and the second syllables were identical. The courts pointed out that in Italian the words ‘snickers’ and ‘kickers’ are pronounced with two syllables and that in both cases the stress falls on the first syllable, thus rejecting Hultafors’ arguments that the marks have a different rhythm.
The court confirmed that the signs show an average degree of similarity from a visual and phonetic perspective and that the goods were identical. Therefore, the court found that the board was correct to conclude that there was a likelihood of confusion between the marks.
The conclusions of the General Court confirm OHIM’s position on this issue. It is important to remember that where figurative marks are based on word elements, those marks may be deemed similar to earlier word marks if the word elements are visually and phonetically similar.
Azhar Sadique 6 August 2013
(This review previously appeared in issue 403, July/August 2013 of the ITMA Review)