Protecting Your Trademark: What About Letters?

The dispute concerning trademarks is much common. Mostly the subject matter generally revolves around the prime question of the likelihood of confusion between the marks. The dispute mostly revolves around such likelihood where the court delves into the comparison of marks involved. This interesting case involves the dispute, not of marks, but a dispute involving letters Φ and Ø. The parties to the dispute were of the viewpoint that the marks were not only about the visual comparison but also for what the marks represent. The case can be a classic example where the dispute not only features the point of having compared the visual structure of the mark but also goes to the extent of having the representational area that the mark desires for.

The applicant Cole Haan LLC filed for registration of figurative sign Ø as an EU trademark under Nice Classes 18 and 25, which includes suitcases, bags, and clothing. This gets opposition from Samsøe & Samsøe Holding A/S, relied on its earlier figurative sign Φ designating European Union for goods in similar Nice Classes 18 and 25, which on comparison shows a slight tilt at a different angle. The Samsoe contended the likelihood of confusion to which the EUIPO Board of Appeal and Opposition Division upheld. Cole appealed this to the ECJ (European Court of First Instance (CFI)).

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The Court of First Instance

The European Court delves into the representational analysis of the letters involved. The mark Ø is in the Danish language while the other mark Φ forms the part of the Cyrillic alphabet, therefore the whole question revolves around the question of one letter each as a trademark. But concerning the public which was mostly French-speaking, both the letters are not used by the consumers and neither French people talks in any of the languages in which the mark are. Cole did object stating that the consumers don’t need to know the language in which the marks are, where on the contrary they can easily assume that these are Scandinavian languages. Meanwhile, the letters which were part of these signs were pronounced differently thereby negating the phonetic similarity.

Nevertheless, the objection raised by Cole was rejected, relying on the fact that it cannot be presumed that foreign languages must be known. For this, CFI quoted judgment of 13 September 2010, Inditex v OHIM – Marín Díaz de Cerio (OFTEN), T-292/08, EU: T:2010:399, para 83. Moreover, even if the foreign origin of the word is recognized, the pronunciation does not necessarily correspond to that of the language of origin, the CFI added.

For the likelihood of confusion, the public must pronounce correctly which was not done thereby, not making a phonetic comparison of the conflicting signs. Conceptually, the comparison could not be made since the older sign has no meaning for the majority of consumers, and the applicant failed to prove anything contrary to this, CFI rules.

Applicant contended that the Board of Appeal erred in finding that the sign was crossed by a vertical straight line, which was not a straight line but rather a diagonal line, to which the CFI upheld. CFI ruled that only the earlier mark contains a straight vertical line observing that the Board erred in finding this. Nevertheless, this does not affect any such visual comparison, where the CFI did uphold that there was a high degree of visual similarity and confirming the likelihood of confusion.

For the cost, Samsoe, even if successful must bear its own cost since it had not applied for its own cost. However, Cole did apply for payment of the cost of proceeding before the Opposition Board and the Board of Appeal, but the action was lost.

Author: Saransh Chaturvedi an associate at IP And Legal Filings,  in case of any queries please contact/write back us at support@ipandlegalfilings.com.