5 May 2009

SEAT in the driving seat

In a recent matter before the Court of First Instance (CFI) in Europe, Seat SA (pronounced Say-Yat) succeeded with an objection against an application for the registration of the MAGIC SEAT trade mark by its competitor, Honda Motor Europe Ltd (Honda). Seat SA recently made a brief appearance in the motor vehicle market in South Africa under the Volkswagen flag, but has since disappeared as fast as it had appeared.

Seat SA is the proprietor of the trade mark SEAT & Logo in Spain, which is registered for amongst others "land vehicles, other components and spare parts for land vehicles".

Honda filed an application for the registration of a Community Trade Mark MAGIC SEAT, for "vehicle seats and vehicle seat mechanisms and parts and fittings and accessories for these".

In an objection before the Opposition Division of the Office for Harmonization in the Internal Market (OHIM), Seat SA argued that this mark was confusingly similar to its prior well-known SEAT & Logo trade mark registered in the same class. The Opposition Division of the OHIM upheld this objection.

Honda, accordingly, appealed this decision to the First Board of Appeal, highlighting amongst others, that purchasers of vehicle seats were sophisticated consumers and would therefore not be confused between the two trade marks. The First Board of Appeal dismissed the appeal based on the fact that:

  • the goods covered by both marks were identical
  • Seat's mark had a high distinctive character in Spain on account of its repute
  • importantly, that "even if consumers did not confuse the two marks and noticed the differences between them, there was a risk that consumers might associate the marks and assume that they had a common commercial origin".

The mere fact that there was a likelihood that consumers might associate the one mark with the other was therefore enough to prevent registration and it was not necessary for Seat SA to prove actual confusion between the two marks. According to the First Board of Appeal, the MAGIC SEAT trade mark could not be registered.

Honda was still not satisfied with this result and proceeded to appeal this ruling to the CFI, but this appeal was once again unsuccessful and the CFI upheld the decision of the First Board of Appeal.

In accordance with Article 8(1)(b) of the Community of the European Union Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, a trade mark applied for is not to be registered if:

  • because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; and
  • the likelihood of confusion includes the likelihood of association with the earlier trade mark.

Based on the overall visual, phonetical and conceptual similarities between the trade marks, the CFI concluded that the hypothetical consumer was likely to either believe that the goods in question came from Seat SA or was economically linked to Seat SA.

With regards to the visual comparison of the trade marks, the CFI noted that it is possible to determine whether there is any visual similarity between a word mark and a figurative mark. The CFI specifically held that "it should be borne in mind that, according to settled case-law, where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark".

With regards to the phonetical similarity, the CFI held that there was a real possibility that the relevant hypothetical Spanish consumer might not perceive the term 'seat' in the MAGIC SEAT trade mark as an English word. There was a possibility that 'seat' might be pronounced as the Spanish two-syllable word (se-at), rather than the monosyllabic English word (seat). The CFI further held that the term 'magic' would be perceived as "purely laudatory" and would not add distinctive character to the trade mark.

The CFI also used the "doctrine of imperfect recollection" to come to a finding and noted that "account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind."

The CFI accordingly held that the First Board of Appeal did not commit an error of assessment in determining that there was a likelihood of confusion or association between the marks on the part of the relevant public and the MAGIC SEAT mark was therefore held to be unregistrable.

Eben van Wyk
Director: Intellectual Property

Regardt Botes
Associate: Intellectual Property

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