OHIM Board of Appeal ruled in Case R2309/2014-4, which concerns an attempt for registration of the following European trademark:
for Class 25: Sportswear; cycling shoes; socks, gloves, shirts, pants, jackets, casual functional jackets, jerseys, pants cycling, vests, shirts, jackets, casual functional jackets, scarves, belts, money, hats, sweatshirts; clothing, footwear, headgear ‘.
Against this mark was filed an opposition based on the following mark:
for Class 3 “Cosmetics, Perfumery”, “Handbags for women” in Class 18 and “outerwear for women ‘in Class 25.
OHIM rejected the opposition because of the lack of visual similarity, which is crucial in relation to such kind of goods – clothing, where visual impact is leading for consumers.
The Board of Appeal confirmed this decision in its entire and stated:
The contested figurative mark consists of a complex lining pattern which resembles the device of a shield or a coat of arms. This pattern consists of an outer line broadened at the upper part. Within this outer line, on a white background, an element is depicted which resembles a black slightly stylised capital letter ‘R’ and which, exactly in the middle, is crossed by a thick vertical black line. The latter is connected to the upper part of the outer line and running down almost to the bottom, but not entirely, having a diverging bottom end. Only after very careful consideration this latter part may be perceived as part of a capital letter ‘T’, forming an integrated part of the outer line of the shield device. The contested mark is dominated by its very specific graphic representation which determines its distinctive character. The earlier figurative mark consists of a taut and simple lining pattern. Within this pattern one may perceive the capital letter ‘T’ followed by a black line formed by a half-oval in the upper part and a straight diagonal line in the lower part, the letter ‘R’ with an incomplete horizontal line, or the letter combination ‘TR’ in which the letter ‘R’ lacks its vertical line. Also the earlier mark is dominated by its very specific graphic representation which determines its distinctive character. The overall impression of the two marks is completely different. This conclusion will not change in the event the letters ‘T’ or ‘R’ or a combination of both will be perceived within the conflicting marks“…”The mere fact that the marks are possibly developed from the abstract concept of the letters ‘T’ or ‘R’ or a combination of both is in itself not a ground to establish any relevant visual similarity between the marks (25/06/2015, T-662/13, M (fig.) / dm, EU:T:2015:434, § 46)“
This case is interesting in terms of the strategy for registration of trademarks, which must take into account the nature of the goods and services in the process of filing of applications. This is crucial in future conflicts with other marks because it determines the scope of potential protection.