VOLVO and LOVOL – not similar
13 January 2015
A decision has been issued in the cases of Volvo Trademark Holding AB v OHIM (Case T-524/11 and Case T-525/11).
The car manufacturer Volvo has failed in its most recent attempt to prevent the registration of two figurative trade marks containing the sign LOVOL.
The European General Court has agreed with the OHIM Opposition Division and Board of Appeal’s preceding decisions in finding that LOVOL is neither conceptually, visually nor aurally similar to VOLVO.
Volvo had opposed the LOVOL marks in 2006 based on their earlier UK and EU registrations for VOLVO, covering engines and vehicles. Hebei Aulion Heavy Industries, a Chinese company, had applied to register the LOVOL marks to cover machines and vehicles more specifically for agricultural use.
In the proceedings that followed, Volvo submitted that the LOVOL marks were confusingly similar to their earlier marks, and claimed that use of the LOVOL marks would take unfair advantage of their notable reputation in the vehicle manufacturing industry.
The General Court began by reiterating the three cumulative conditions which must be satisfied if a trade mark with a reputation is to prevent the registration of a new trade mark. First, the marks at issue must be identical or similar. Second, the earlier mark must have a reputation, and third, there must be a risk that use of the new mark will take unfair advantage of, or be detrimental to, the earlier mark’s reputation.
At first instance and on appeal, VOLVO fell at the first hurdle. The marks at issue were found to be dissimilar, and therefore there could be no risk of confusion between them and no risk of harm to Volvo’s reputation.
The Board of Appeal had previously compared LOVOL to VOLVO and stated that although the signs shared four out of five letters, those letters were in a different order. Neither the initial letters nor the first syllable of each sign were the same. Moreover, as a result of the high price and technical nature of the relevant goods, the average consumer is likely to pay greater attention to the marks. Accordingly, the Board found it unlikely that the consumer would divide the marks into their respective syllables so as to create an anagram and then associate LOVOL with VOLVO.
The General Court agreed. The signs at issue contain the letters ‘v’, ‘l’, and ‘o’ and include the letter combination ‘vol’, but that is not enough to establish visual or aural similarity. The lack of similarity also precluded Volvo from relying on their reputation for protection, despite the lower degree of similarity required by the courts when considering a well-known mark.
Since the marks have no meaning, it was impossible to compare them on a conceptual level. However, Volvo submitted that consumers who encounter the ‘invented trade mark’ LOVOL will be ‘intrigued’ by it, especially since there are a limited number of car manufacturers. As such, consumers will question whether the new mark for cars has any connection with a ‘very old and highly reputed trade mark for cars’ and will then be led to associate it with VOLVO. These arguments lacked any legal basis or supporting evidence and were hence dismissed by the General Court.
Interestingly though, Volvo further argued that a connection could be made between the signs in the minds of consumers because there is a ‘visual dictionary’ in the human brain which people develop when learning to read. The General Court in response noted that even where several letters in two words coincide, the differences between the remaining letters mean that reading those words activates different neurones in the human brain:
“…from the point of view of an experienced reader, the distance between the English words ‘hair’ and ‘hare’ is the same as between the words ‘hair’ and ‘soup’, despite the fact that ‘hair’ and ‘hare’ are pronounced identically.”
This was perhaps a misleading example since VOLVO and LOVOL do not rhyme and ‘hair’ and ‘hare’ are likely to be seen as similar words in trade mark court proceedings. However, the overall message of the General Court is clear. Volvo’s reputation could not come into play unless similarity was established, and LOVOL neither looks nor sounds sufficiently similar to VOLVO.
Trade Mark group
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© Withers & Rogers LLP, January 2015