Thrown into reverse
Yet Dale Carter sees future opportunities for a Volvo comeback. T-356/18, Volvo Trademark Holding AB v EUIPO, General Court, 24th September 2019
In 2015, Paalupaikka Oy (the Applicant) applied to register the figurative mark shown below right for “wheels” of varying sorts in class 12. Relying on a collection of earlier marks under Articles 8(1)(b) and 8(5) EUTMR, Volvo Trademark Holding AB (Volvo) opposed but was unsuccessful at first instance and on appeal.
In overturning a decision of the Fourth Board of Appeal (BoA) the General Court (GC) confirmed that, when relying on Article 8(5) in opposition proceedings, a finding of partial identity in one or more relevant aspects of two marks is sufficient to trigger an analysis of the additional cumulative elements of Article 8(5).
The GC’s decision turned on a visual comparison between the marks. The BoA had found that the dominant elements of the later-filed mark and the VOLVO word mark were not even “slightly similar” on a visual level, were aurally dissimilar and that no conceptual comparison could be undertaken. As regards a comparison of the Applicant’s mark and Volvo’s figurative marks the BoA found there was no similarity on account of “even wider” differences between them. In light of the BoA’s finding that the marks were dissimilar, it did not go on to consider the other conditions of Article 8(5).
The GC criticised the BoA’s approach and held that the BoA had failed to recognise the existence of numerous identical elements in the dominant parts of the marks in question. These similarities necessitated a finding that there was a low level of visual similarity which, according to the GC, was sufficient to require analysis of the other elements of Article 8(5).
In particular, the BoA had erred in overlooking the near identity of the letter V and the prominence of this letter in the marks, a similar combination of colours and the presence of a circular shape in both. These similarities were not negligible, notwithstanding the significant differences between the marks. The GC annulled the BoA decision and remitted it to the BoA for reconsideration.
This decision is likely to be seen as strengthening Article 8(5) in the sense that a full analysis of the conditions of this article are necessary even where only a low level of similarity exists between two marks.
It leaves open the possibility for the BoA to find that the similarities between the Applicant’s mark and Volvo’s marks are sufficient to bring the earlier marks to mind and to give rise to damage under Article 8(5). Volvo may be able to rely on the Applicant’s past conduct to point to an intention to take unfair advantage of Volvo’s trade marks. In this regard, and although not considered as part of the present case, the writer notes that the Applicant has filed (and has had refused) other applications for trade marks reminiscent of famous motor vehicle brands. In light of such conduct it may also be difficult for the Applicant to argue that it had “due cause” when adopting the V V-WHEELS mark.
- In assessing similarity under Article 8(5) EUTMR a small degree of similarity between dominant elements is sufficient to require an analysis of the additional conditions of Article 8(5)
- The existence of common elements in marks that are clear and can be immediately perceived is sufficient to find similarity under Article 8(5). This can include colour combinations
More case comments:
A figurative addition didn’t guarantee distinctiveness, reports Jasmine Sihre. B 3 079 387, Sky Ltd v Guangdong Dabanya Intelligent Technology Co. Ltd, EUIPO, 17th March 2020.
Its recent opposition certainly missed the mark, writes Emila Petrossian. B 2 399 957, Monster Energy Company v Hollywood Marketing SLU (t/a Monster.travel), EUIPO, 13th March 2020.
An unusual opinion on pronunciation caught the eye of Rose Smalley. B 3 082 511, Nokia Corporation v Shenzhen Road Zhengtong Trading Co. Ltd, EUIPO, 5th March 2020 .
Roshani Muniweera offers the tale of a problematic appeals decision. C-328/18 P, Equivalenza Manufactory SL v EUIPO, CJEU, 4th March 2020.
Trade Mark Attorney, Reddie & Grose LLP