Intellectual Property – Community Trade Marks – Likelihood of Confusion

By Rosanna Cooper

In GfK AG v Office for Harmonisation in the Internal Market (OHIM) (2005), a company’s application for a community trade mark was rejected on the grounds that there was a likelihood of confusion with a previously registered German 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 only 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 opposition’s mark as it did for the applicant’s mark.

The court held that:

the differences between the registered mark and the applicant’s 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 applicant’s 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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