The decision of June 3, 2009 (C-394/08 P), concerned the likelihood of confusion between the word sign ZIPCAR for which registration was sought for goods and services in, inter alia, class 39, in particular for travel and transportation services, transportation reservation services, and vehicle rental, and the trademark CICAR, registered in Spain for vehicle rental reservation services. The owner of the trademark CICAR gave notice of opposition on the ground of the likelihood of confusion. The Opposition Division of OHIM allowed the opposition. This decision was confirmed by the Board of Appeal of OHIM and the Court of First Instance. The services in question are in part identical, in part very similar as they either relate to the rental of vehicles, or are complementary to the rental of vehicles. The signs are very similar phonetically. In the current case, the average Spanish-speaking consumer will not perceive ZIPCAR as an English word, since the first syllable (“zip”) is not an English word that is generally known by that consumer. Besides, even if the average Spanish-speaking consumer recognized the foreign origin of the words “zip” and “car,” there is no reason to think that he will pronounce ZIPCAR according to the rules of English pronunciation. The average consumer would pronounce the word “car” in both conflicting marks in the same way, whether he pronounces that word according to the rules of Spanish or English pronunciation. It cannot be assumed that the average Spanish-speaking consumer’s knowledge of English will allow him to understand the evocative meaning relied on by Zipcar.
The European Court of Justice followed this view. There is a strong phonetic similarity that plays a decisive role in this case. For the purposes of defining the relevant public, account must be taken of the average consumer of Spain. Even if it is accepted that in certain regions of Spain English is commonly spoken, or that some Spanish consumers have knowledge of English, the English knowledge of an average consumer has to be applied. For this group, a likelihood of confusion exists.