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IP Cases & Commentary – Details

10 September 2012

SEVEN SUMMITS - ‘Seven’ not so Lucky for Sport Eybl & Sports Experts GmbH

Helen Cawley

SEVEN SUMMITS - ‘Seven’ not so Lucky for Sport Eybl & Sports Experts GmbH

This case is an appeal to the General Court from Sport Eybl & Sports Experts GmbH (‘Sports’) following the refusal of their trade mark application for SEVEN SUMMITS (Device) for goods in Class 18 based on an earlier trade mark owned by Seven SpA for the trade mark SEVEN (stylised) for goods also covering Class 18.

Figure 1: Sport Eybl & Sports Experts GmbH SEVEN SUMMITS mark

Figure 1 - Sport Eybl & Sports Experts GmbH SEVEN SUMMITS mark

Figure 2: Seven SpA SEVEN mark

Figure 2 - Seven SpA SEVEN mark

The Opposition Division had upheld the opposition and refused registration of SEVEN SUMMITS (Device) under Article 8(1)(b) of Regulation 207/2009. Sports appealed this decision but this was also upheld by the Board of Appeal who found that there was “a very low degree of visual similarity, a medium degree of aural similarity and some conceptual similarity between the two marks”. It concluded that

“Even if the figurative elements of the marks at issue differed, a likelihood of confusion between those marks could not be ruled out because, given the prominent display of the word element ‘seven’ as well as the fact that the goods covered by the marks at issue are in part identical and in part similar, the targeted public might perceive the goods as belonging to two distinct product ranges but as coming, nonetheless, from the same manufacturer.”

Sports further appealed the decision to the General Court by claiming that OHIM had erred in their comparison of the trade marks, contending that “given the overall impression made by the marks at issue, those marks are not visually, aurally or conceptually similar, and there is no likelihood of confusion for the purposes of Article 8(1)(b) owing, in particular, to the very low distinctive character of the element ‘seven’ ”.

Sports agreed with OHIM that the goods in question were in part identical and in part similar, and that the relevant public is reasonably well-informed and reasonably observant and circumspect.

Sports did, however, take issue with the Board of Appeal decision, claiming that it had not taken account of the very low inherent distinctive character of the element ‘seven’. Sports made references to previous decisions of the Opposition Division and Board of Appeal which had found that numbers generally have a very low distinctive character, even where the number is present entirely in letters.

Sports argued that numbers are generally used to indicate quantity, weight and serial numbers, but the public is not used to seeing them as trade marks.

Sports claimed that if this decision is upheld, it could have a knock-on effect for later trade marks containing the same number if combined with other elements. Sports also took issue with the Board of Appeal finding that ‘seven’ was prominently displayed in both trade marks. Finally, Sports claimed that the Board of Appeal had erred in their assessment that consumers might assume that the products are from two different product ranges from the same manufacturer.

In its decision, the General Court held that “even if the Board of Appeal had made no explicit statement as to the inherent distinctive character of the earlier mark, it is nevertheless clear from the proceedings” that it agreed with the Opposition Division who found that the earlier mark had “normal distinctive character”.

In connection with the assessment of the element ‘seven’, the General Court found that the trade mark met the criteria for registration and the comparison of trade marks was correctly made on the basis that the word ‘seven’ had normal inherent distinctive character. Sports had not furnished any evidence to advance their argument that the trade mark SEVEN was low in distinctive character.

In dismissing Sports’ argument that the Board of Appeal had erred in their global assessment of the likelihood of confusion, the Court clarified that the Board of Appeal did not find that the element ‘seven’ was dominant in the mark applied for or that the element ‘SUMMITS’ was insignificant. The Court confirmed that the Board of Appeal approach is consistent with case law such that the “existence of a similarity between two marks does not presuppose that their common component forms the dominant element within the overall impression created by the mark applied for; rather, it is sufficient in that connection that the common component not be negligible”.

Finally, the General Court distinguished this case from previous decisions made by the Opposition Division and Board of Appeal claiming that every decision is determined on a case-by-case basis and the cases put forward by Sports could not act as a precedent.

This case demonstrates the current practice by OHIM of a very strict comparison and the fall-back that every case is individual and assessed on its merits; hence OHIM’s decisions can often be seen as inconsistent.

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