An applicant filed the following word combination for registration as a mark in respect of goods in Class 17 (insulating materials).
The owner of the following European mark registered in Class 11 (installations for filtration) filed an opposition.
The Hungarian Intellectual Property Office (HIPO) dismissed the opposition. The HIPO held that the word elements 'aer' and 'aero' are known in Hungarian and, as a result, their distinctiveness is weak. Moreover, the two signs are neither visually confusing nor confusing in terms of their significance. However, it is true that the designation of the two groups of goods (Classes 17 and 11) is similar.
The applicant requested a review by the Metropolitan Tribunal, which succeeded, as the tribunal overturned the HIPO's decision and rejected the trademark application. In so doing, the tribunal applied the European Court of Justice's (ECJ's) ruling in Formula One Licensing v OHIM (C-196/11) on likelihood of confusion. The ECJ had held that a competent authority:
must verify the way in which the relevant public perceives the sign which is identical to the (earlier) national trademark in the mark applied for and evaluate, if necessary, the degree of distinctiveness of that sign. However, their verification has limits (Paragraphs 42 and 43).
Quoting these sentences, the Metropolitan Tribunal appreciated the degree of distinctiveness and danger of confusion, but not the elements of the two opposed marks. The tribunal held that the above likelihood of confusion could not be considered in this case (3 Pk 20 170/2016).
This Metropolitan Tribunal ruling serves as useful reminder that decisions on likelihood of confusion always contain subjective elements.
Long before the EU Trademark Law Directive (89/104/EC) was established, several countries had demanded objective criteria for evaluating the existence of likelihood of confusion. Arguably, the ECJ's judgment in Formula is a step in this direction and the Metropolitan Tribunal's decision to follow this guidance should be welcomed.