The extent of harmonisation of European trade mark law and practice was recently illustrated by two opposition decisions involving the trade marks Revolvo and Volvo.
In the first case, Timken UK vs Volvo Trademark Holding (O-263-15), Timken had filed a UK trade mark application for the trade mark Revolvo in Classes 7, 12 and 42, the majority of the goods and services claimed relating to bearings for industrial machines and equipment and vehicles. The application was opposed by Volvo on the basis of their earlier trade mark rights in, as well as their goodwill and reputation in, the trade mark Volvo. The opponent’s registered trade mark rights covered identical and similar goods and services in Classes 7, 12 and 42. It was accepted by the Hearing Officers involved that Volvo had a reputation in their house mark for vehicles including motor cars, buses and trucks, as well as for parts for such goods (and ancillary services).
In the first decision made by the UK Trade Mark Office, the Hearing Officer rejected all of Volvo’s grounds of opposition, Section 5(2)(b) (likelihood of confusion), Section 5(3) (unfair advantage/detriment) and Section 5(4)(a) (passing off). In the original Hearing Officer’s view, the two trade marks Revolvo and Volvo were far enough apart to avoid a likelihood of confusion, a link being made between them by the UK public or to the use of Revolvo constituting a misrepresentation to that same (UK) public.
Volvo appealed to the Appointed Person (Professor Annand). Professor Annand rejected Volvo’s appeal in relation to their Section 5(2)(b) ground of opposition since she agreed that there was no likelihood of confusion between the trade marks Revolvo and Volvo. However, the Appointed Person was dissatisfied with the way in which the original Hearing Officer had considered Volvo’s other two grounds of opposition, namely those involving unfair advantage and detriment (Section 5(3)) and passing off (Section 5(4)(a)). She therefore sent the opposition back to the UK Trade Mark Office for further consideration of Volvo’s Section 5(3) and Section 5(4)(a) claims by a different Hearing Officer.
The case therefore came before Mr Allan James in May 2015. In his decision (issued on 10 June 2015), Mr James first considered the similarity of the two marks. In Mr James’ opinion, Timken’s use of their trade mark Revolvo in relation to bearings would be seen as an obvious play on the English word “revolve”. This would make it unlikely that UK consumers would dissect the mark into the constituent parts Re- and -volvo. This, in turn, would mean that the coincidental use of the letters -volvo in the trade mark Revolvo was likely to go unnoticed by relevant consumers. That being the case, Mr James concluded that the level of similarity between Revolvo and Volvo was between very low and non-existent.
This key finding led Mr James to decide that the use of the trade mark Revolvo in the UK would not either lead to the relevant public making a link between it and the opponent’s house mark (Volvo) or constitute a misrepresentation to the UK public (that a Revolvo bearing was being passed off as a Volvo sourced bearing). In the latter case, the fact that Timken (and its predecessors) had been peacefully selling Revolvo branded bearings in the UK since 1972 reinforced Mr James’ views on the (lack of a) possibility of passing off. That being the case, Mr James confirmed the original Hearing Officer’s decision and rejected Volvo’s opposition based on Section 5(3) and 5(4)(a). It follows that, subject to a further appeal, Volvo’s UK trade mark opposition now stands fully rejected.
Two weeks before the publication of the UK Trade Mark Office’s decision, OHIM had issued its own verdict on the trade mark conflict between the trade marks Revolvo and Volvo. In this case, between Volvo Trademark Holding and Revolvo Limited (a company related to Timken UK), the authorities took a rather different view of the matter.
Volvo had opposed Revolvo’s International (CTM) trade mark application for the trade mark Revolvo again covering goods and services in Classes 7, 12 and 42. The Swedish vehicle manufacturer relied on a number of their earlier CTM and UK trade mark registrations for marks consisting of or containing the trade mark Volvo, as well as on their reputation in their house mark.
After considering the considerable body of evidence that had been filed by the opponent, OHIM’s Opposition Division found that Volvo had
i) Established use of its house mark for a wide range of goods and services, including many in Class 7, including “bearings”, and Class 12, again including “(vehicle related) bearings”; and
ii) Proved a reputation in the trade mark Volvo for “vehicles”, especially “cars”.
On that basis, the Opposition Division proceeded to consider Volvo’s two grounds of opposition based on likelihood of confusion (Article 8(1)(b) CTMR) and reputation (Article 8(5)). Dealing with the Article 8(1)(b) ground first, the tribunal had no difficulty in ruling
that the Class 7 and Class 12 goods claimed by Revolvo were identical with the Class 7 and Class 12 goods, especially the bearings, for which the opponent had proved use of their house mark. The Opposition Division did however find that Revolvo’s Class 42 services (design and similar type services) were dissimilar to all of the goods and services upon which Volvo was able to rely. They then turned to the crucial comparison of the two marks. There was no difficulty in finding that the two marks were similar (visually and phonetically) to the extent that the mark applied for (Revolvo) contained the whole of the earlier mark (Volvo). Unlike the UK Trade Mark Office however (which thought that the UK public would associate the trade mark Revolvo (for bearings) with the English word “revolve”), the Opposition Division decided that the two marks have no meaning for the public in the EU. Without a conceptual difference, and given OHIM’s mathematical/scientific approach to such matters, it was perhaps inevitable that a mark (Revolvo) that contained the whole of an earlier five letter mark (Volvo) would be found similar to the earlier mark.
In view of this finding, plus the intermittently applied OHIM practices that consumers tend to remember similarities rather than dissimilarities, and that the same consumers only rarely have a chance to make a direct comparison between the different marks (imperfect recollection), the Opposition Division had no difficulty in deciding that there would be a likelihood of confusion between the trade marks Revolvo and Volvo in relation to identical and similar goods/services. They therefore rejected the CTM applied for under Article 8(1)(b) CTMR in respect of the Class 7 and Class 12 goods claimed.
That left the Class 42 services of the opposed CTM application which had been found to be dissimilar to the goods and services provided by Volvo in the EU under their house mark. The Opposition Division therefore turned to the opponent’s reputation in the trade mark Volvo in respect of vehicles and the Article 8(5) ground of opposition. In this regard, they commented as follows:
• Even though, the contested ( Class 42) services are provided by (specialised in the given area) consultants (engineers/designers), while the reputed goods are “vehicles”, there is an intersection of the markets of these goods and services, following from the inevitable design involvement when manufacturing the reputed goods.
• It is considered that due to the fame of the earlier sign and the similarity of the signs in question, it is likely that a link will be established in the mind of the consumer as to relate the contested design services (and consultancy thereof) to the usual complexity of the design of the reputed goods and thus the reputed goods and services (sic).
In other words (I think), the relevant consumers would link Revolvo branded design services with Volvo vehicles because of the relationship between those who design complex products like vehicles, and machinery for making such vehicles, and the vehicles themselves.
All of this meant, in the Opposition Division’s opinion, that the Revolvo Class 42 services would free ride on the back of Volvo’s reputation in their house mark for vehicles which association would make the marketing of the Revolvo services easier. Having ticked all of the necessary boxes placed in the path of an opponent relying on its reputation in a trade mark, Volvo’s opposition under Article 8(5) was found to succeed in respect of the opposed Class 42 services.
On that basis, Revolvo’s CTM application was rejected in its entirety; the Class 7 and Class 12 goods under Article 8(1)(b) and the Class 42 services under Article 8(5).
Although the progress of European trade mark offices and OHIM towards harmonisation has been, in many key areas, such as the application of absolute grounds objections, the examination of trade mark applications on relative grounds, non-use grace periods and the filing of oppositions or cancellation actions before national offices, rather than before national Courts, has been glacial, there was always one area of practice in which complete harmonisation was probably illusory. This was the comparison of two trade marks in different EU jurisdictions that speak different languages.
As is well established, the comparison between trade marks is done visually, phonetically and conceptually. Quite often, it is a conceptual dissimilarity that can overwhelm certain visual and phonetic similarities and lead to a finding of no likelihood of confusion (or no unfair advantage/detriment). This was the position in the UK opposition between Revolvo and Volvo. The proximity of the trade mark Revolvo to the English word “revolve” would (for bearings) not only lead to a conceptual difference but would also lead to the trade mark Revolvo being more likely to be seen, visually and phonetically, by UK consumers as a mis-spelling of “revolve”, rather than the prefix Re- and the house mark of a well-known Swedish vehicle manufacturer (Volvo).
The CTM system by contrast is a European system. It encompasses 28 European countries and 24 different languages. It is not an English system for English speakers. This point is perfectly illustrated when a CTM application is opposed on the basis of an earlier CTM registration. The comparison between the marks must be in all EU languages, not just in English. Thus, even though it is probably incorrect of OHIM’s Opposition Division to state that the trade mark Revolvo has no meaning for the whole EU public, it probably does have a “revolve” meaning for English speakers, it must certainly be true that for a very large number of EU consumers, both Revolvo and Volvo are meaningless marks. Without any difference in concept, it becomes that much easier to find that the presence of the whole of Volvo in Revolvo means that the two marks are (visually and phonetically) similar and that therefore there would be a likelihood of confusion and unfair advantage/detriment.
So, even though Revolvo bearings are sold in at least ten EU countries and seem to have been for a number of years, presumably without any confusion with Volvo’s competing products, the decision of the Opposition Division in the above opposition is probably more justifiable than many of the other opposition decisions made by both OHIM and the European Court.