Applicant's mark | Earlier mark |
v_wheels.jpg | volvo_logo.jpg |
In August 2015, Paalupaikka Oy (the Applicant) filed an application for the EU figurative mark V V-WHEELS (above left) in class 12 covering 'Wheel rims [for automobiles]; Rims for vehicle wheels; Wheels; Casters [wheels] for vehicles; Automobile wheels; Wheels for motorcycles; Vehicle wheels; Casters [wheels] for trolleys; Wheels [land vehicle parts]; Wheels for racing karts; Wheels, tyres and continuous tracks.'
Volvo Trademark Holding AB (the Opponent) opposed the application based on its earlier EU and national figurative marks (above right) which all covered class 12.
The Opposition Division rejected the opposition. The Opponent filed a notice of appeal and the Fourth Board of Appeal of EUIPO dismissed the appeal, finding the marks at issue dissimilar. The Opponent then appealed the decision before the General Court pleading the infringement of Article 8(5) EU trade mark regulations (EUTMR).
The General Court noted that, according to settled case law, there are three cumulative conditions that must exist in order to find an infringement of Article 8(5) EUTMR:
- the marks in question need to be identical or similar
- the earlier mark cited in the opposition must have a reputation
- there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.
The Court also noted that the existence of a likelihood of confusion is not necessary for the purposes of the protection conferred by Article 8(5). It is sufficient for the relevant public to make a connection between the marks at issue even though it does not confuse them.
Therefore, the degree of similarity required by Article 8(5) EUTMR is lower than that required by Article 8(1)(b) EUTMR.
Regarding the similarity of the marks, the Court stated that the assessment must be based on the overall impression. The assessment can be based solely on the dominant distinctive element of the mark only if all the other components of the mark are negligible.
In the present case, the Court noted that the dominant element of the Applicant's mark was the letter 'v', written in silver in a slightly stylised font and placed in a blue circle with a fine silver outline. The Court also noted that there were elements of visual similarity between the signs at issue:
- the letter 'v' coincides with the first letter of the word element 'volvo' and they are written in the same font
- the word elements 'v' and 'volvo' in the signs at issue are positioned in the middle of their respective signs and are clearly given prominence
- a highly similar combination of colours is used
- both signs are circular in shape.
The Court recognised that there were also significant visual differences between the signs.
However, those differences did not make the similarities negligible in the overall impression created by the marks and, given the low degree of similarity required by Article 8(5) EUTMR, a degree of visual similarity existed between the signs at issue.
Hence, the Board of Appeal erred in finding that the marks were visually dissimilar.
Case Ref: t – 378/18
Fabio Lo Iacono
