Case T 363/06 in the Court of First Instance: Honda Motor Europe Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM). Other Party: Seat SA
Background to the case
Honda had tried to register a community trade mark for the name 'Magic Seat', for vehicle seats and vehicle seat mechanisms. The car company Seat already had a mark registered for 'land vehicles, coupling and transmission components as well as other components and spare parts for land vehicles not belonging to other classes; apparatus for locomotion by land, air or water’. Seat claimed an infringement of article 8(1) of the Community Trade Mark Regulation 40/94, and relied on the strength of its reputation, particularly in Spain.
OHIM refused to register Honda's mark on this basis, and Honda appealed. The Board of Appeal dismissed the appeal on the basis that to grant it would cause confusion and because certain goods covered by the marks were identical and the marks were similar to a certain extent at a visual level, that they were similar at an aural level, and that they risked being perceived as similar at a conceptual level.
Basis of the Appeal by Honda
Honda appealed on the basis that the decision by the Board of Appeal was flawed.
The Court's Decision
Relevant territory and the relevant public:
- The Court of First Instance (CFI) said that the Board of Appeal was correct to judge that Spain was the relevant territory for applying Article 8(1)(b). The relevant public was on the one hand, second-hand car dealers, garage owners and mechanics and, on the other hand, average consumers.
- The CFI stated that the assessment of the likelihood of visual, aural or conceptual similarity causing confusion, should be based on the overall impression created by them, considering their distinctive and dominant components.
- The marks were similar to an extent because of the word "seat" in both marks, even though the word "magic" appeared in Honda's mark. "Magic" would be perceived as a qualifying adjective for the word "seat", as it was similar to the Spanish equivalent word "mágico".
- Honda argued that the relevant public would not pronounce "magic seat" as a Spanish expression. This was rejected, as there was a chance that it would be pronounced as a Spanish word, similarly to the Seat brand (which is pronounced with two syllables), rather than the English word. Therefore it would create an association with the company 'Seat'. The word "magic" would be seen as a qualifying adjective for the word "seat", due to its resemblance to its Spanish equivalent "mágico".
- The CFI confirmed that although the word "seat" did not exist in the Spanish language, it had taken on its own meaning in Spanish, particularly with an association to the company 'Seat'. Honda's mark risked being seen as conceptually similar to Seat's mark, with the qualifying adjective 'magic' added.
Likelihood of confusion
- The CFI therefore ruled that there was a likelihood of confusion in the relevant public and confirmed that OHIM had been correct in not granting Honda a registered trade mark.