Are “S.O…?” and “S.O.” Confusingly Similar? Apparently So...
In a decision handed down a few days ago the EUIPO Fourth Board of Appeal held that despite marks being envisaged for different classes, in some cases, they can still be regarded as confusingly similar and bear the same meaning within the EU.
SO, how did this arise? In early 2009, Applicant Debonair Trading International sought to register ‘SO…?’ as an EU trade mark under Classes 14 and 25 of the Nice Classification. A few months later, the applicants received a notice of opposition from s, Oliver Bernd Freirer GmbH & Co. KG on the basis of its earlier registered EU trademark for ‘S.O.’ registered in 2001 under class 25 of the Nice Classification.
The Opponent claimed that the later ‘SO…?’ mark would likely be confused with the former moreover claiming that it was either identical and/or similar to the earlier trademark for identical and/or similar goods.
May last year saw the EUIPO Opposition Division upheld the application for the goods in Class 14, but rejected it for those under Class 25. Applicant Debonair Trading appealed to the EUIPO Fourth Board of Appeal in July arguing that the signs were aurally and visually dissimilar and that the overall impression of the earlier mark was separated by full stops whereas the ellipsis and question mark in the contested mark excluded any likelihood of confusion.
All claims were disputed by the opponent.
The Board considered the visual, conceptual and aural similarities between the two marks. With consideration of the goods, the Board stated that these were identical to that of the contested mark in class 25. With regards to the comparison between the marks, visually it was affirmed that simply differing in punctuation marks would not be perceived as particularly distinctive as punctuation marks give raise to minor visual differences. The signs were therefore considered to be visually similar to an average degree.
Aurally, the pronunciation of both signs is identical for the public that pronounces them as a single word ‘SO’ and that the contested mark’s element ‘SO’ repeats exactly the same sounds as the earlier mark’s. The signs were therefore considered aurally identical for part of the relevant public or similar to an above average degree for the other part.
By taking into account the aforesaid together, the Board found that there was a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR.
The decision held by the board gives indication that despite the fact a word mark may carry different meanings in various EU jurisdictions, that alone does not exclude it from a finding of confusing similarities.