On 20 February 2013, in Caventa AG v. OHIM, the Fifth Chamber of the General Court of the European Union upheld the decision of OHIM’s Board of Appeal to deny registration as a Community mark of the sign B BERG. The applicant, Caventa AG (Switzerland) initially sought registration of the mark for clothing, footwear, and headgear, in Class 25 of the Nice Classification, as well as for gymnastic and sporting articles and equipment included in Class 28. The mark had the following look:
Anson’s Herrenhaus KG, owner of a verbal mark „Christian Berg“ (Community mark no. 3383676) registered in Classes 3, 18, 25 and 35, opposed the registration on the basis of Article 8(1)(b) of the Council Regulation (EC) No. 207/2009 of 26 February 2009 on the Community trademark:
Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered: … if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.
OHIM’s Opposition Division rejected the opposition in September 2010, but the OHIM Board of Appeals subsequently upheld the appeal and refused registration. According to the Board, the products at issue were similar, the verbal elements of the marks were identical, and therefore confusion on the part of an average customer was likely.
In declarations submitted to OHIM in September and October 2012, Caventa AG limited the list of products for which it now sought registration. The Court interpreted the limitation to mean that Caventa AG did not object to the Board of Appeals decision in so far as it pertained to footwear and headgear. The issue that remained for the General Court to decide was whether there was a likelihood of confusion between, on the one hand, the clothing produced by Anson’s Herrenhaus KG, and, on the other hand, Caventa AG’s clothing (Class 25) and gymnastic and sporting articles and equipment (Class 28). To reach the decision, the Court first looked into the similarity, if any, of products and similarity of signs.
Similarity of products
The Court distilled from its jurisprudence that appreciation of the similarity of products must especially take into account their nature, purpose, their method of use and whether they are in competition with each other or are complementary. Other factors that also may be assessed include the channel of distribution of the products at issue.
In rejecting Caventa AG’s claim that its gymnastic and sporting articles and equipment included in Class 28 were not similar to Anson’s Herrenhaus KG’s clothing articles from Class 25, the Court reasoned that the category of products from Class 25 for which Anson’s Herrenhaus KG’s mark was used included articles such as football shirts and gym clothes – which may also fall under Class 28. In addition, the two groups of products shared the same channels of distribution and could be sold in the same specialized stores. Finally, the products were complementary for some sports disciplines.
Similarity of signs
The Court found that the two signs were visually, phonetically, and conceptually similar. Caventa AG, of course, claimed the opposite: that the signs were dissimilar, because “Christian Berg” lacked distinctiveness altogether, whereas the letter “B” in “B BERG” made the latter sign distinctive and dissimilar in comparison to “Christian Berg”. According to Caventa AG, „Berg“ was not a distinctive element in the mark „Christian Berg“, because „Berg“ was associated, especially amongst German-speaking consumers, with “mountain”. „Christian“, as a frequent first name, was not distinctive either. Nor did the combination of “Christian” and “Berg” make the sign as a whole distinctive.
The Court rejected that argument. It first noted that figurative elements of the mark applied for (B BERG) were devoid of distinctive character because they consisted of a standard letter type and basic geometrical figures (a triangle and a rectangle). The word „berg“ was common to both signs and made them visually and phonetically similar. With regard to consumers who do not attribute any meaning to the element “berg”, conceptual comparison is not relevant; in that instance, however, the visual and phonetic comparison is pertinent, and it leads to the finding of similarity between the two signs. For other consumers, the two signs are conceptually similar as well. Those consumers would perceive the element “berg” in the two signs as either a fanciful term or a family name (the latter is especially likely if the consumer has already been confronted with the senior mark “Christian Berg”). From the perspective of these consumers, “berg” is a distinctive element in both signs. The presence of a common distinctive element makes the two signs conceptually similar.
The Court did not think that the letter “B” (in B BERG) sufficed to annul the similarity created by the identity of the element “berg”. “B”, according to the Court, is likely to be perceived as an abbreviation the purpose of which is to reinforce the presentation of the element “berg”.
Likelihood of confusion
The Court found average consumers to be likely to believe that the products from Class 25 and Class 28, when sold under the marks “Christian Berg” and “B BERG”, came from the same source.
In the clothing sector, the Court recalled, the public is accustomed to the use of the same mark in different variations, depending on the type of the products designated, but always sharing the dominant common element. This part of the judgment implies that the word “berg” is likely to be perceived in the role of the common dominant element in one mark used in different variations. Furthermore, the Court continued, the use of signs consisting of family names is common in the clothing and fashion sectors. In this instance, consumers would likely understand the word “Berg” in the two signs as denoting the same producer of clothes. The presence of the letter “B” and the first name “Christian” in the two marks was insufficient to eliminate the likelihood of confusion. All these considerations apply in respect to applicant’s articles in Class 25 (clothing) and Class 28 (gymnastic and sporting articles and equipment) alike, because the latter are complementary to sports clothing and frequently sold in the same stores.
