Have you ever seen two less likely allegedly similar marks?

Although he is generally reluctant to criticise individual IP rights owners for seeking to protect their market position, and equally reluctant to criticise those members of the IP professions who represent them, there are times when the temptation to do so becomes very great.

One such occasion when the temptation became fairly strong was today, however, when on reviewing the recent crop of appeals to the Court of First Instance of the European Communities regarding Community trade mark law he came across Case T‑162/08, Frag Comercio Internacional, SL v Office for Harmonisation in the Internal Market, Tinkerbell Modas LTDA.

Tinkerbell applied to register as a Community trade mark the sign on the right. Frag opposed, citing a likelihood of confusion with the mark on the left, on account of their similarity and the identity or similarity of its goods to the goods and services for which Tinkerbell had applied to register its mark. If you look very carefully you can just about see the words "by missako" in a scribbly sort of script at the bottom of Tinkerbell's sign.

The Opposition Division, the Board of Appeal and the Court of First Instance were all united in considering that the respective sign and mark were not hugely similar. The miracle is that it took the Court some 22 paragraphs of patient, formulaic judgment to explain that the marks were dissimilar.

The IPKat has seen some dissimilar marks touted as being similar over the years, but he doesn't think he has ever seen so egregious a case of dissimilarity as this. In case he was mistaken, he took the trouble of showing the pair of them to some friends and colleagues, each of whom was totally puzzled as to how anyone could have thought them similar. Merpel adds, what's also annoying is that Frag applied to the court to reject the application for registration, even though this plea has been ruled inadmissible in a string of cases going back many years. She feels that this exercise was a waste of someone's time, effort and money and hopes that futher appeals to the Court of Justice, the United Nations and the Celestial Tribunal will not be forthcoming.

Citibank wins dilution case

Citigroup, the company responsible for Citibank has won a dilution case before the Court of First Instance.

Citi applied to register CITI in fancy script as a CTM for ‘customs agencies, property valuers, real estate agents, evaluation and administration of house contents’. Citigroup opposed, based on its family of marks consisting of or containing the word "Citi".

OHIM rejected the opposition with regard to the services of customs agencies under Art.8(5). The Board found that Citigroup didn't have a reputation in a family of marks containing the "citi" element. Only the CITIBANK mark had a reputation, and that reputation was limited to banking. Moreover, the applied-for CITI mark and the CITIBANK mark weren't similar.

The CFI avoided ruling on whether there was a family of "citi" marks with a reputation because it was possible to proceed on the basis of the CITIBANK mark having a reputation.

However, OHIM had slipped up in finding that CITI and CITIBANK were not similar since "citi" was the distinctive and dominant element of both marks. Thus the marks were visually, aurally and conceptually similar to the required degree.

OHIM hadn't got as far as ruling on whether there was dilution of the sort required to satisfy Art.8(5). Here there was an overlap between the two parties' clients, and those clients would most probably be familiar with CITIBANK, which could

"lead to free-riding, that is to say, it would take unfair advantage of the well-established reputation of the trade mark CITIBANK and the considerable investments undertaken by the applicants to achieve that reputation. That use of the trade mark applied for, CITI, could also lead to the perception that the intervener is associated with or belongs to the applicants and, therefore, could facilitate the marketing of services covered by the trade mark applied for. That risk is further increased because the applicants are the holders of several trade marks containing the component ‘citi’".

The IPKat reckons this was the correct decision. The Board's position on similarity of marks was always a bit strange here - so strange in fact that OHIM appears to have been arguing against the Board's decision. The Board saw the CITIBANK mark as a whole and didn't see CITI as distinctive or dominant. Moreover, Citigroup's reputation for CITIBANK bolstered the need to treat the mark as a whole, and not to single out the CITI element. The Kat is somewhat disappointed by the unfair advantage analysis though. In particular, rather a lot of it seems to come down to a likelihood of consumers being confused. If the EU wants a ground based on confusion where the parties' goods are disimilar, this should be explicit, rather than hiding behind unfair advantage.