31 Mar SNCF succeeds in opposing VROOM trade mark
SNCF succeeds in its opposition against the Besos Family Foundation’s EUTM application as the General Court holds the marks VROOM and POP & VROOM to be confusingly similar.
The Besos Family Foundation, an American non-profit organisation for children’s learning and development set-up by the parents of Amazon founder and CEO, Jeff Bezos, filed an EUTM application for the word mark VROOM to cover “Computer software, namely a mobile application for providing information and learning and educational activities and games in the field of early child development and early childhood education” in class 9. SNCF Mobilities (now known as SNCF Voyageurs), a subsidiary of SNCF Groupe, the French Public Railway company (Société nationale des chemins de fer français), opposed the application based on its earlier French registration for POP & VROOM that covered a wide list of goods and services in classes 9 and 42, arguing that the later application created a likelihood of confusion with its earlier registration. The EUIPO (EU Intellectual Property Organisation) agreed with SNCF and refused the application for VROOM.
Following an unsuccessful appeal to the Board of Appeal, the Foundation appealed to the General Court to overturn the Board of Appeal’s decision and to reinstate its application. The appeal concerned three main issues: definition of the relevant public; comparing goods that are a subset of a category of goods, and the required level of conceptual similarity between the signs.
- Relevant public
The Board of Appeal found that the relevant public was the French public, composed of both general public and professionals, whose level of attention was high. The Foundation argued that its “mobile application and computer software for games and activities relating to early child development and childhood education” were aimed at parents, which were a different part of the public from that of SNCF. Consequently, as the applicant is a non-for-profit organisation, those parents do not form part of the general public and are therefore not professionals.
The Court rejected this claim holding that the relevant public should be assessed according to the categories of goods and services covered by the mark at issue. It is irrelevant, for the purposes of defining the relevant public, that the applicant is a non-for-profit organisation or that the opponent is an affiliate of the French national railway company. The target parents of the Foundation’s goods are part of the general public as the status of parent does not correspond to the exercise of a specific profession and, educators, when carrying out their profession are also likely to use the goods, form part of the professional public. The Board of Appeal was therefore correct in its findings.
- Comparing a subset of a category of goods
In relation to the comparison of goods, the Foundation argued that the “computer software” and “mobile applications” in class 9 of the earlier registration in so far as they related to transport, were not sufficiently clear and precise within the meaning of the IP Translator decision. Accordingly, as the goods in the later application related to the education and development of children, those goods were not identical to that of the earlier registration.
While IP Translator established that goods and services for which protection is sought must be sufficiently clear and precise to enable the competent authorities and economic operators to determine the extent of protection sought, the Court, citing Skykick, confirmed that the lack of clarity and precision of the terms used to designate the goods and services covered by the registration of a national mark cannot be considered as a ground for invalidity of that mark. The same principle applied to opposition proceedings whereby even if it was established that the registration of the earlier mark in respect of “computer software” and “mobile applications” in class 9 is not sufficiently clear and precise, this would not prevent a comparison of the relevant goods from being carried out for the purposes of assessing the likelihood of confusion.
The Foundation had also incorrectly placed a narrow restriction on the “computer software” and “mobile application” goods and services in the earlier registration, which were not purely limited to transport. As such, the Foundation’s computer software and mobile applications relating to children’s early learning and development were merely a specific type of computer software or mobile application included within those covered by the earlier registration, which were therefore identical.
- Required level of conceptual similarity
The Foundation argued that the Board of Appeal failed to consider the presence of the elements “POP” and “&” preceding the term VROOM in the earlier mark and that, similar to the Board of Appeal’s assessment of the term VROOM, “POP” is also an onomatopoetic word that alludes to the expression of an engine sound in reference to the opponent’s field of interest. As the terms POP and VROOM both refer to engine sounds, the conceptual difference between the marks was high.
Rejecting these arguments, the Court stated that while it is settled caselaw that the first part of a mark can be the most striking element and can serve to distinguish marks being compared, this did not ring true in all cases. Where the later-filed mark is entirely reproduced within the earlier trade mark this generally creates a strong visual and phonetic similarity. As for the conceptual comparison, if the Board of Appeal had found that ”POP” alluded to the expression of an engine, the conceptual similarity should have been identical. However, regardless of whether the term POP refers to pop music as the Board of Appeal found or to the sound of an engine, and whether or not the marks were conceptually similar to an average degree or identical did not alter the global assessment of the likelihood of confusion.
Furthermore, whether or not the Foundation and SNCF are competitors is just one factor to considered in the global assessment for the purposes of establishing if a likelihood of confusion exists. It is irrelevant how the Foundation actually intended to use its later-filed mark, what is important is how the mark may be used in the future. Even if the parties are not in competition now, they may be in the future. Having considered all the factors in the case, the Board of Appeal was therefore correct to find that there was a likelihood of confusion between the marks.
Comment
This case highlights that in opposition proceedings much hinges on the potential for future events to occur e.g. the likelihood of consumers being confused, the likelihood of the parties competing in the same field, and less emphasis is placed on the actual situation in the market. While it may be the case that the Foundation and SNCF Voyeur may in fact co-exist peacefully in their particular fields, as long as there exists the potential of a conflict between them the opposition will succeed. (Click here for case details T-56/20)
For advice on trade mark rights and protection, please contact Yvonne Onomor at Elys IP.
