United by a common trademark, still divided by the languages: CFI rules on Reverie

Fabio Angelini

On May 7, 2008, the Court of First Instance (CFI) upheld the OHIM Board of Appeals (BofA) decision in the case T‑246/06, Redcats SA v. Ohim. The BofA had found a likelihood of confusion between the earlier CTM REVERT and the CTM application for REVERIE for identical goods (beds, bed bases, mattresses in class 20 and sheets, blankets, duvets, pillowcases in class 24).

The CFI’s decision is the latest in the list of the so called linguistic-based cases most of which should have by now been moot, especially after the Matratzen’s case (Case C-421/04). Yet, many are still cluttering the hallways of the Luxemburg Court, sometimes upon puzzling theories, such in the case at issue, where the applicant of the applied for CTM argued that BofA’s analysis, which had taken into consideration consumers from various parts of the EU, was wrong, because the signs had to be compared “at a phonetic and conceptual level by assessing the mark in the light of the French language because it is a mark registered in France by a French company, and the earlier mark in the light of the Spanish language as it is inter alia the trading name of a company incorporated under Spanish law”.

While it is unclear to me from where in law or case law the applicant came up with such a theory, it suffices to say that the CFI has reconfirmed that even if Article 8 of CTMR does not contain a provision similar to that of Article 7(2) CTMR to the effect that an application to register a trade mark may be refused where the absolute ground for refusal obtains in only part of the Community, it must be held, in the light of the unitary character of the Community trade mark set out in Article 1(2) CTMR that principle also applies, by analogy, to a relative ground for refusal for the purposes of Article 8(1)(b) CTMR so that registration must be refused even where the relative ground for refusal obtains in only part of the Community.

Starting from this principle, the CFI thus stated that contrary to what the applicant had submitted, the comparison must be made with regard to all the languages spoken by the relevant public, in the present case where the earlier right is a CTM, all the Community languages, and not with regard only to French and Spanish or English. Accordingly, since the marks at issue were phonetically similar in German and since it was not possible to compare the marks conceptually in that language, any possibility of counteracting the visual and phonetic similarities was accordingly precluded and a likelihood of confusion was the inevitable consequence.

Once again, I wonder if it was really necessary to go up to the Court of justice to get such a result…