HANNAH MONTANA Disney Enterprises v Montana Alimentari
Finding in favour of Disney, the Office of Harmonization for the Internal Market (OHIM) has held that the famous family entertainment company may register the sign HANNAH MONTANA as a Community Trade Mark.
Disney filed the application in May 2006 seeking protection for goods in Classes 21, 30 and 32, covering (amongst other things) household/kitchen utensils and containers, coffee, tea and cocoa as well as beers and non-alcoholic drinks.
In January 2007, the application was opposed by the Italian foods and restaurants company, Montana Alimentari SpA, with the opposition being directed against all goods in Classes 30 and 32.
In bringing the opposition against Disney’s application, the Italian company relied upon a number of earlier registered rights (including trade marks with Community and International protection) which contain the common element MONTANA, together covering goods and services in Classes 29, 30, 31, 32, 33 and 43.
The Opposition Division’s Decision
Before the Opposition Division, the opponent successfully proved that the respective goods in Class 30 were identical to those goods protected by its own Community Trade Mark for the word MONTANA as well as its International Registration for the mark M MONTANA ALIMENTARI.
In relation to the goods in Class 32, the Opposition Division considered that certain of the applied for goods were identical but that in relation to others (specifically, syrups and other preparations for making beverages), the goods were complementary to the broad category of non-alcoholic drinks, for which the opponent benefited from protection. As a result, they were considered to be highly similar.
As the goods were deemed identical/similar, it was then the job of the Opposition Division to assess whether the signs were identical or similar.
Fully considering the visual, aural and conceptual similarities of the signs, the Opposition Division held that the earlier marks and the applied for sign were indeed similar, not least for the reason that the contested sign incorporates the word MONTANA (considered to be the most distinctive element) in its entirety.
Further, after carrying out a ‘global assessment’, it was determined that there existed a likelihood of confusion on the part of the general public.
The Board of Appeal’s Decision
Dissatisfied with the decision of the Opposition Division, Disney applied to OHIM’s Board of Appeal for its annulment.
On appeal (and concerning the similarity of the relevant goods), the Board considered that as there had been conflicting evidence presented in relation to the goods protected by the opponent’s relied upon International Registration (M MONTANA ALIMENTARI), the scope of protection to be conferred upon the mark could not be determined.
Regarding the opponent’s Community Trade Mark, MONTANA, the Board of Appeal held that the mark had limited distinctiveness and merely alluded to a geographical location (that being the state of Montana in the US which is said to be renowned for cattle breeding). On this basis and in carrying out an assessment as to the similarity of the signs, the Board of Appeal concluded that a likelihood of confusion could even be excluded for identical goods (ie, the goods protected under Class 30).
The Board added that this was particularly the case as the opponent’s earlier mark and the applied for sign are similar to a low degree, both visually and phonetically.
As a result, the Board of Appeal annulled the decision of the Opposition Division allowing the mark to proceed to registration… and Disney lived happily ever after! (unless a further appeal is filed!).