Trademarks, Brands, Patents, Designs, Made in Italy, Copyrights, Competition Law, Contracts and Enforcement

28 giugno 2008

If the CFI misses the polar star

Stefano Sandri

In case POLARIS v. POLAR, T- 79/ 07, 26 june 2008, the goods at issue covered by the trade mark applied for namely software for financial institutions, are comprised in the wider range of goods covered by the earlier mark POLAR, namely computer programmes.

The goods to which the trade mark application relates must be regarded as directed solely at the staff of financial institutions who are responsible for purchasing the specialised software used in those institutions. Therefore, the public who might confuse the trade marks in question consists only of that specialised public.

In this connection the relevant public, composed here of specialists in the area of goods concerned, is likely to evince a high degree of attentiveness when selecting those goods. Taking into account these factors the Court retained that the conflicting trademarks are likely to be confused essentially on the assumption of their different meaning. In this respect the Court remembers that the visual, aural or conceptual aspects of the signs do not always have the same weight and it is appropriate, in a global assessment, to take into account the nature of the goods at issue and to examine the objective conditions under which the marks may appear on the market.

As far as to the semantic value of a sign, although I don’t intend establish a true hierarchy in comparison to the other parameter (visual and aural aspects) I have been always convinced that the former prevails, as it was confirmed last year by a survey a carried through Overmoon ( see in the site). The case law of TPI , on its turn, attributes a very special distinctive strength to the verbal trade marks when they include a word of direct and clear meaning (see MATRATZEN case, for instance).

I can’t be but happy with the decision. The word ‘polar’ has, in many languages, a clear meaning linked to the poles of the earth. What is funny is the assertion of TPI that the meaning of the word ‘polaris’ is generally not known by the consumer concerned. Does it means that high specialized people on software are out of the world? That the stylised star on the letter ‘a’ of the figurative mark POLARIS will be associated with the pole star, according to the court seems inconsistent.

The only inconsistency I can find here is in the heads of the people who use to be in the heaven but miss the polar star.

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