In Case T-537/11, the General Court had to review the finding of likelihood of confusion between the following marks
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The Opposition Division and Fourth Board of Appeal of OHIM upheld the opposition on the basis of Article 8(1) (b) CTMR. Since the earlier mark is an Italian mark, the relevant territory for the purposes of analysing the likelihood of confusion is Italy, and the average consumer concerned is a member of the public at large and has a normal level of attentiveness.
The goods covered by the signs at issue are identical. The signs have an average degree of visual and phonetic similarity since both first syllables will be stressed and the consonants “k” and “sn” are not significant in the overall pronunciation. OHIM rightly emphasises that, although many consumers have a sufficiently good knowledge of English, the ending ‘ickers’ does not exist in Italian and that it will appear unusual to the majority of the relevant consumers. Further, the signs are conceptually neutral because the Italian consumer will not recognize the verb “to kick”; the inherent distinctive character of the earlier mark must be regarded as normal, since the word ‘kickers’ does not have meaning for the goods concerned in Class 25.
Furthermore, likelihood of confusion can be confirmed, even on the basis of the average distinctiveness of the earlier mark. Thus it was not necessary to examine the argument relating to the enhanced distinctiveness of the earlier mark and the one based on Article 8(5) of CTMR. The General Court dismissed the appeal.