In SHS Polar Sistemas Informáticos SL v OHIM [2008] T- 79/07 (unreported), the Court of First Instance (CFI) rejected an opposition, originally upheld by the Office for Harmonization in the Internal Market (OHIM) Opposition Division, brought by the owner of the Community trade mark (CTM), POLAR, registered for computer software, against an application to register the figurative mark, POLARIS, for computer software specifically for financial institutions. Taking into account that the relevant public was specialised and highly attentive, the Court considered that there were significant differences between the marks sufficient to dispel any likelihood of confusion.

BACKGROUND

Polaris Software applied to register the figurative sign POLARIS as a CTM for software for financial institutions in Class 9. SHS Polar Sistemas opposed the application on the basis of a likelihood of confusion under Article 8(1)(b) of the Community Trade Mark Regulation (40/94/EC) with its earlier Community word mark POLAR, registered for computers and computer programs.

The Opposition Division accepted that there was a likelihood of confusion and upheld the opposition. The Second Board of Appeal, however, annulled that decision and rejected the opposition. It considered, essentially, that, whilst they covered identical goods, namely software for use in financial institutions, the conflicting signs were conceptually different and had sufficiently distinctive visual and aural features to rule out a likelihood of confusion on the part of the relevant public. The relevant public in this case were circumspect and very attentive and consisted of staff in financial institutions responsible for the acquisition of the specialist software in question. SHS Polar Sistemas appealed to the CFI.

CFI DECISION

It was common ground that the goods covered by the trade mark applied for, namely software for financial institutions, were comprised in the wider range of goods covered by the earlier mark, namely computer programs. It was also common ground that those goods to were directed solely at the staff of financial institutions, who were responsible for purchasing the specialised software used in those institutions. As such, the public who might confuse the trade marks in question consisted only of that rather specialised public. A relevant public composed of specialists was likely to evince a higher degree of attentiveness. Furthermore, the purchase of specialised software, which was expensive and generally the fruit of many years of development, often in collaboration with the final consumer, required a scrupulous selection process, during which the consumer concerned would examine various products on the market. The Board had therefore been right to take into account the nature, in particular the highly technical character, and the price of the goods concerned, in finding that the degree of attentiveness of the relevant public at the time of purchase would be particularly high.

The Court was not persuaded, as Polar Sistemas argued, that the Board should have taken into account the fact that the earlier mark covered a wide range of software and encompassed in particular software for personal use. On account of the fact that the trade mark application referred only to software for financial institutions, the Court was satisfied that the Board had correctly assessed the likelihood of confusion by taking into account the circumstances in which that specialised software, to which both the marks related, was marketed. Even if the consumer concerned would notice the earlier mark when purchasing non specialised software and pay less attention on such an occasion, that argument did not preclude account being taken of the particularly high degree of attention paid by a consumer when he purchased the specialised software in question. Accordingly, the Board could not be criticised for failing to have envisaged the possibility that the choice made between different specialised software by the professional consumer concerned, could be influenced by his earlier experience acquired when purchasing software for personal use.

As to the assessment of the degree of similarity between the marks, the Court agreed with the Board that, for a very attentive consumer, the significant differences between the marks at issue, each considered as a whole, overrode their similarities. Visually, the length of the respective marks was different and one had a graphic on the letter “a”. Aurally, despite their common root, the words “polar” and “polaris” were pronounced differently. For an attentive consumer, that difference remained significant, even if the stress was put, as SHS Polar Sistemas submitted, on the second syllable of both words: “lar” and “la” respectively. Additionally, whilst the beginning of the marks was identical and, in principle, the initial part of word marks was more likely to capture the attention, the Court pointed out that this was not true in all cases and could not, in any event, cast doubt on the principle that an examination of the similarity of trade marks must take into account the overall impression produced by them.

As far as the conceptual comparison was concerned, the fact that the words had the some root did not necessarily mean that they would be associated with the same idea. That was true, in particular, where, as in the present case, one of the words (“polar”) could, in some languages, have a clear conceptual meaning that the other (“polaris”) did not have. Thus there was little or no conceptual similarity between the marks.In conclusion, taking into account the particular circumstances in which the goods concerned were marketed, the CFI found that there were sufficient differences between the marks at issue to dispel any likelihood that the consumer concerned, who was especially attentive, might believe that the goods covered by those marks originated from the same undertaking or economically-linked undertaking.

COMMENT

The Court refused to acknowledge that financial services professionals may, in their professional capacities, come across software products not specifically designed for financial institutions. Leaving aside the differences between the marks, it is interesting to consider what, if any, difference it would have made if the specification of the mark applied for had not been limited to banking whilst the earlier mark had. It is perhaps arguable that when buying financial services software, financial services staff will know what they are doing, but when buying general software they may not be so capable of distinguishing products.