In  Case  T-383/12,  Ferienhäuser  zum  See  v  OHIM,  the  EU General Court has found Community trade marks (CTMs) containing the words “SUN” and “PARK”  confusingly similar for travel services. The General Court noted that confusion can exist even when  the earlier mark is of low distinctiveness if there is a similarity between the signs and the goods  or services.

BACKGROUND

Ferienhäuser applied to register a figurative sign for a mark containing the words SUN PARK  HOLIDAYS and the strapline “Die wohl kinderfreundlichste Art Campinggurlaub zu machen!” (“Probably  the most child-friendly way to have a camping holiday!”) in blue, yellow and black as a CTM for  travel-related services in Classes 39 and 43.

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Sunparks Groep, opposing the registration, relied on Article 8(1)(b) of CTM Regulation 207/2009/EC with respect to an earlier Community figurative mark in blue  and green containing  the  words  SUNPARKS  HOLIDAY  PARKS  for travel-related services in Classes 39, 41 and 43.

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The Opposition Division of the Office of Harmonization for the Internal Market (OHIM) and OHIM’s Fourth Board of Appeal upheld the opposition. Ferienhäuser  appealed to the General Court.

DECISION

It was accepted that the services covered by the respective marks were identical. Comparing the  signs, the General Court observed that the average consumer usually perceives the mark as a whole,  without breaking the mark down into its various components.  An assessment of similarity can only  be based on a dominant element where the other components of the mark are insignificant.

The General Court rejected Ferienhäuser’s challenge to the OHIM Board’s finding that the word  elements  “SUN”, “PARK”, and “HOLIDAY” in the earlier mark were “weakly distinctive”.    According  to  Ferienhäuser  the  word  element 

“SUNPARKS”  in  the  earlier  mark  and  the  word  elements “SUN”, “PARK” and “HOLIDAYS” in the opposed mark were not distinctive but “descriptive of holiday  and recreational services”. Disagreeing, the General Court said that the successful registration of  a mark indicates that it has the minimum level of inherent distinctiveness, since a mark devoid of  distinctive character could not be registered. Further, the Board did not have the authority to  decide on distinctiveness in opposition proceedings, as the grounds of opposition were restricted  to relative grounds for refusal. Ferienhäuser would have had to apply for a declaration of  invalidity to challenge the earlier mark for lack of distinctiveness.

The Board’s ruling that the signs were phonetically similar was not disputed. With regard to visual  similarity, the General Court agreed that the word “SUNPARKS” was the dominant element of the  earlier mark whereas the words “SUN PARK HOLIDAYS” were the dominant elements of the opposed mark.  Since the latter began with “SUN” and “PARK”, the relevant public would consider this mark visually  similar to the dominant element of the earlier mark, i.e. “SUNPARKS”.

With regard to conceptual similarity, both marks included the word elements “SUN”, “PARK(S)” and  “HOLIDAY(S)”. In the General Court’s view, the relevant consumer would appreciate that the marks  shared a vacation and/or holiday theme. The inclusion of the slogan “Die wohl kinderfreundlichste  Art Campinggurlaub zu machen!” merely suggested a more specific type of holiday that was intended  for families with children. Moreover, the size of the slogan when compared to the rest of the  disputed mark meant that it would be overlooked by the relevant consumer.

Dismissing Ferienhäuser’s appeal, the General Court concluded that the Board had not erred in  finding a likelihood of confusion. Even where the earlier mark was  weakly distinctive, there could  still be a likelihood of confusion as a result of the similarity of the signs and of the goods or  services covered. In the global assessment of the likelihood of confusion, the distinctiveness of  the earlier mark was only one of several relevant factors.

COMMENT

The decision confirms that it is possible for the registration of a subsequent mark to be opposed  successfully, even if the earlier mark is only weakly distinctive, because there is a presumption  that marks which are successfully registered contain the necessary degree of distinctive character.  The stronger the similarity between the signs and between the goods or services covered, the more  likely it is that a likelihood of confusion will be found.