Trademarks Comparison Should be Based on the Global Assessment

Author: Erikas SaukalasAssociate Partner, Attorney-at-Law, Head of the International Relations Division at METIDA

Despite a large number of arguments why their trademark is eligible for registration, a German company providing camping and accommodation services failed to register their new trademark. In this legal case a long known rule was repeatedly applied, according to which, trademarks comparison should be based on the global assessment taking into account all relevant factors. Therefore, even when the trademark distinguishes itself in terms of colour and visual elements, it can still be recognized as confusingly similar if it verbally resembles earlier marks.

Ferienhauser zum See filed an application to register a mark “Sun Park Holidays Die wohl kinderfreundlichste Art Campingurlaub zu machen” (Eng. “Probably  the most child-friendly way to have a camping holiday!”) as a Community trademark (CTM) for transportation, packaging, storage of goods and arrangement services in class 39, as well as for supply of food, drink and temporary accommodation  services in class 43.

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However, in response to this application, a company Sunparks Groep NV providing accommodation services opposed the application on the basis of their own earlier CTM “Sunparks Holiday Parks” registered for transportation, packaging, storage of goods and travel arrangement services in class 39, for education, training, entertainment, sporting and cultural activities services in class 41 and for supply of food, drink and temporary accommodation services in class 43.

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The Office for Harmonization in the Internal Market (OHIM) upheld the opposition. Following this decision Ferienhauser zum See appealed against it. However, the Board of Appeal supported OHIM’s decision and pointed out that the slogan “Die wohl kinderfreundlichste Art Campingurlaub zu machen!” included in the disputed trademark is written in a smaller font, its nature is descriptive and thereby, the customers might not notice it. Therefore, the dominant element of the opposed mark is considered to be the words ‘Sun’, ‘Park’ and ‘Holidays’ due to which the disputed mark is similar to the earlier trademark subject to figurative and phonetic elements and thus may cause the likelihood of confusion.

Disagreeing with this decision, Ferienhauser zum See filed an appeal to the General Court arguing that the element ‘Sunparks’ in the earlier trademark and the words ‘Sun’, ‘Park’ and ‘Holidays’ in the opposed mark are descriptive in terms of registered services, hence, the comparison of marks must be based only on marks’ colours and images which are sufficiently distinct in both marks.

While assessing the appeal, the General Court took into account that the comparison of trademarks should be based on the global assessment, therefore the trademarks must be compared in light of all the factors. In other words, both the similarity between the marks and the similarity between the services they cover should be examined. However, the Court does not exclude that in some cases one or several of mark’s components may be dominant.

With regard to the relevant public, the General Court did not agree with the position of Ferienhauser zum See that the relevant public is limited to Germany’s inhabitants, who, according to Ferienhauser zum See, are very observant in preparation for a holiday. The Court stated that, in view of the fact that the trademark of Ferienhauser zum See is a CTM, all Community residents must be considered as the relevant public.

Hence, The General Court rejected Ferienhauser zum See’s argument that the previous mark is composed only of descriptive words devoid of any distinctive character. The Court indicated that the registration itself is already an evidence for a distinctive character.  The Court also dismissed Ferienhauser zum See’s argumentation that the previous mark was registered by mistake, as the Court was assessing the confusing similarity of marks rather than the legitimacy of the registration.

The General Court emphasised that the slogan in Ferienhauser zum See’s mark written in smaller letters is descriptive in nature, therefore, “Sun Park Holidays” and “Sunparks Holiday Parks” were compared being treated as the main elements. According to the Court, the visual elements and colours of the marks play a secondary role in the assessment of the similarity between these marks, and thus the greater emphasis must be given to verbal elements.

After the comparison of the marks, the General Court held that the marks are visually and semantically similar and that there is a moderate degree of phonetic similarity. The Court also pointed out that even if the earlier mark was weakly distinctive, there could  still be a likelihood of confusion caused by the registration of the new marks. Therefore, the General Court dismissed the appeal made by Ferienhauser zum See.

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