ECJ Decision on “DOLPHIN”: Interesting assessments regarding similarity of goods and likelihood of confusion
Recently, we have become aware of the judgment of the General Court (Second Chamber) of 12 July 2012, case T-361, “DOLPHIN”, in which an interesting assessment regarding the similarity of goods and likelihood of confusion was made. On 10th of April 2006, Orange Brand Services Ltd filed an application before OHIM for registration of word mark “DOLPHIN”, for goods in class 9 of the Nice Agreement, particularly “telecommunications systems and installations; interactive terminals for displaying and ordering goods and services; electrical and electronic accessories”. Aware of this CTM application, Hand Held Products, Inc, started opposition proceedings, as right holder of the earlier CTM “DOLPHIN”, registered for “barcode and image scanners and related software for use therewith” also in class 9. The ground relied on by Hand Held Product, in support of the opposition proceeding, was article 8 (1)(b) of Regulation 207/2009. In May 2010 the Opposition Division rejected the opposition, so Hand Held Products, appealed the decision. The First Board of Appeal also rejected the opposition brought by Hand Held Products, mainly because it understood that the confronted goods were different in nature and purpose and also, because they were not in competition, neither complementary. Given these facts, the controversy was taken to the General Court, which assessed the similarity of the goods in question comparing the goods covered under the earlier CTM “DOLPHIN” and the goods for which protection was sought. In its assessment, the General Court followed the line drawn by both, the OHIM and the First Board of Appeal regarding the comparison made between “barcode and image scanners and related software for use therewith” and “interactive terminals for displaying and ordering goods and services” and “telecommunications systems and installations” (goods covered by the CTM application filed by Orange Brand Services, Ltd, in the same class), concluding that the confronted goods were dissimilar. The Court reasoned that the essential differences between the confronted goods laid in their “method of use and intended purpose”. It was also found that the public the goods were intended for were different, professionals in the case of “barcode and scanners” and the general public with respect to the other goods. Nevertheless, with regards to the comparison made between “barcode and image scanners” and “electrical and electronic accessories” the Court found that the products in question were similar, contrary to what the previous instances had held. Such a conclusion was reached because in the view of the Court “barcode scanners” are not stand- alone products, but rather “accessories to main devices” which implies that without the main device they have to be added to, the barcode scanners are of no use at all. Therefore, and according with the definition given by the Board of Appeal regarding electrical and electronic accessories, the products were deemed to be similar. Regarding the likelihood of confusion, the Court recalled that it must be assessed globally, considering in particular the similarity of the trademarks and that of the goods covered (Canon & Metro Goldwyn Mayer, C-39/97). Accordingly, and given that “electrical and electronic accessories” are similar to “barcode and image scanners” covered by the earlier trademark “DOLPHIN” the Court rejected the opposition in respect of them and dismissed the action as to the remainder. In Salvador Ferrandis and Partners we believe the General Court got it wrong when establishing that “barcode and image scanners” and “electric and electrical accessories” are similar, on the basis of the definition the Board of Appeal gave of “electrical and electronic accessories”. It is clear that the Court reached this conclusion taking into consideration what it is said or understood that these products are, instead of their nature, their intended purpose and functionality, which are the factors that should have been considered, among others, when making the assessment. The worrying is that it seems that courts encounter new difficulties when applying the law. Such difficulties do not have to do with IP, but rather with the names we give to things and with the precision and definition of terms in language of the things in particular.
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