On 10 April 2013, the EU General Court upheld in Höganäs AB v OHIM T-505/10, a decision by the Office of Harmonization for the Internal Market (OHIM) permitting an opposition to the registration of the word mark ASTALOY on the ground there was a likelihood of confusion between the mark and an earlier Community trade mark (CTM), HASTELLOY.

BACKGROUND

In June 2004, Höganäs applied to register the word mark ASTALOY as a CTM for goods in Class 6 under the description of "iron-based metal powders for industrial use". Hayes International opposed the application under Article 8(1)(b) of the CTM Regulation (207/2009/EC) due to likelihood of confusion with an earlier CTM, HASTELLOY, for goods in Class 6 under the description of "unwrought and partly wrought common metals and their alloys; common metals in the form of sheets, plates, bars, rails, castings, forgings, billets, pipes and tubes; welding rods, dies, valves, cables, wires, wire powders".

OHIM and its Board of Appeal upheld the opposition, finding that the goods covered by the marks were similar, the signs were visually and phonetically similar and the coexistence of the marks had not been established prior to the CTM application. It therefore considered that a consumer of the similar goods would not be able to distinguish between the marks at issue.

Höganäs applied to the General Court to annul the Board’s decision.

DECISION

The General Court agreed with the earlier decisions and found that a likelihood of confusion between the trade marks at issue could not be excluded at the outset.

The General Court assessed the likelihood of confusion globally, taking into account the alleged coexistence of the marks. Höganäs claimed that there was no likelihood of confusion since the two marks had coexisted peacefully in the market place, without confusion, for at least 15 years. The Court held that if the likelihood of confusion potentially existed throughout the European Union, then absence of the likelihood of confusion as a result of the coexistence of the marks identical to the marks at issue must in turn be proved throughout the European Union. Whilst the Court was satisfied that Höganäs had demonstrated that the ASTALOY mark was present in all Member States at the time of application, it found that the evidence demonstrating lack of confusion (affidavits from a former Höganäs executive and a consultant in the field of powder metallurgy) was insufficient as it did not pertain to consumers of the relevant products.

The General Court also rejected Höganäs’ argument that it was also the owner of the trade mark ASTALOY CrM, which covered the same geographical area and products as those covered by the mark at issue. The Court held that the likelihood of confusion must be assessed on the basis of the mark applied for and the earlier mark forming the basis of the opposition.

COMMENT

To preclude likelihood of confusion through coexistence, the coexistence of the marks must be peaceful and sufficiently long for it to be able to influence the perception of relevant consumers.

If a likelihood of confusion potentially existed through the European Union due to the scope of the earlier trade mark, the absence of likelihood of confusion as a result of the coexistence of the marks at issue must be proved in all Member States. The evidence must demonstrate that the relevant consumers are not confused by the coexistence. The General Court also indicated that other evidence, in addition to sales information, can be used to prove presence and use of a mark in a particular geographical market, provided the relevant products are highly specialised and destined for professional purchasers.

The General Court warned, however, that even if such coexistence between the marks were to be established, it alone would not be sufficient to establish an absence of a likelihood of confusion. The assessment of the likelihood of confusion is a global one, where all relevant factors are to be taken into account.